Realtime Adaptive Streaming, LLC

Patent Trials and Appeals Board

Nov 10, 2020

IPR2019-01033 (P.T.A.B. Nov. 10, 2020)

Trials@uspto.gov Paper 33
571.272.7822 Date: November 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

GOOGLE LLC and YOUTUBE LLC,
Petitioner,

v.

REALTIME ADAPTIVE STREAMING LLC,
Patent Owner.
_______________

IPR2019-01033
Patent 7,386,046 B2
_______________

Before GEORGIANNA W. BRADEN, GREGG I. ANDERSON, and
KEVIN W. CHERRY, Administrative Patent Judges.

BRADEN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6, and this Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a). For the reasons that follow, we determine Petitioner has not
shown by a preponderance of the evidence that claims 1 and 23 of U.S.
Patent No. 7,386,046 B2 are unpatentable.
I. INTRODUCTION
A. Procedural History
Google LLC and YouTube LLC (collectively “Petitioner”) filed a
Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1 and
23 of U.S. Patent No. 7,386,046 B2 (Ex. 1001, “the ’046 patent”). Realtime
Adaptive Streaming LLC (“Patent Owner”) timely filed a Preliminary
Response (Paper 6, “Prelim. Resp.”). Pursuant to 35 U.S.C. § 314(a), we
instituted an inter partes review of all challenged claims on all proposed
grounds of unpatentability. See Paper 9 (“Dec. to Inst.”), 40.
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 17, “PO Resp.”), to which Petitioner filed a Reply (Paper 21,
“Reply”). Patent Owner then filed a Sur-Reply (Paper 26, “PO Sur-
Reply”).
An oral argument was held on August 18, 2020. A transcript of the
oral argument is included in the record. Paper 31 (“Tr.”).
B. Real Parties-in-Interest
Petitioner identifies only Google LLC and YouTube LLCas the real
parties-in-interest pursuant to 37 C.F.R. § 42.8. Pet. 1. Petitioner also
indicates that Google LLC is a subsidiary of XXVI Holdings Inc., which
itself is a subsidiary of Alphabet Inc., and further indicates that XXVI
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Holdings Inc. and Alphabet Inc. are not real parties-in-interest. Id. There is
no dispute regarding the identification of the real parties-in-interest.
C. Related Matters
Petitioner informs us of multiple pending district court proceedings
involving the ’046 patent, some of which involve Petitioner. Pet. 1–3.
The ’046 patent also was the subject of the following IPR: IPR2019-00209
(filed Nov. 11, 2018), in which, the petitioner failed to carry its burden to
demonstrate the unpatentability of any challenged claims in the ’046 patent.
IPR2019-00209, Paper 330, at 42.
Patent Owner informs us of five pending district court proceedings
involving the ’046 patent. Paper 4, 2 (Patent Owner’s Mandatory Notices).
D. The ’046 Patent
The ’046 patent was filed on February 13, 2002, and is titled
“Bandwidth Sensitive Data Compression And Decompression.” Ex. 1001,
code (54). The ’046 patent issued on June 10, 2008. Id. at code (45).
The ’046 patent claims priority to U.S. Provisional Application No.
60/268,394, filed on February 13, 2001. Id. at code (22), (45), (60).
Accordingly, February 13, 2001 (“the priority date”), is the earliest date to
which the ’046 patent may claim priority.
1. Written Description
The specification describes systems and methods directed to
“compressing and decompressing based on the actual or expected
throughput (bandwidth) of a system employing data compression and a
technique of optimizing based upon planned, expected, predicted, or actual
usage.” Ex. 1001, 7:53–56, 9:12–14. The ’046 patent explains that a
challenge in employing data compression for a system is selecting one or
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more optimal compression algorithms from a variety of available
algorithms. Id. at 1:41–44. For example, a desired balance between speed
and efficiency is typically a significant factor that is considered in
determining which algorithm to employ for a given set of data. Id. at 1:44–
47. This is because algorithms that compress particularly well usually take
longer to execute whereas algorithms that execute quickly usually do not
compress particularly well. Id. at 1:47–49. The ’046 patent states
“dynamic modification of compression system parameters so as to provide
an optimal balance between execution speed of the algorithm (compression
rate) and the resulting compression ratio, is highly desirable.” Id. at 1:51–
54.
The ’046 patent also states that it seeks to “provide[] a desired
balance between execution speed (rate of compression) and efficiency
(compression ratio).” Id. at 8:10–12. For example, where the speed of the
encoder causes a “bottleneck” because “the compression system cannot
maintain the required or requested data rates,” “then the controller will
command the data compression system to utilize a compression routine
providing faster compression . . . so as to mitigate or eliminate the
bottleneck.” Id. at 13:46–54. The ’046 patent discloses that it can resolve
“bottlenecks” in the throughput of a system by switching between different
compression algorithms applied to data. Id. at 9:57–60. The ’046 patent,
therefore, discloses a system and method for compressing and
decompressing based on the actual or expected throughput (i.e., bandwidth)
of a system employing data compression. Id. at 9:11–14.
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One embodiment of the ’046 patent is shown in Figure 1, reproduced
below.

Figure 1 “is a high-level diagram of a system for providing bandwidth
sensitive data compression/decompression according to an embodiment of
the present invention.” Id. at 8:57–60. As shown in Figure 1, host
system 10 includes controller 11, compression/decompression system 12, a
plurality of compression algorithms 13, storage medium 14, and plurality of
data profiles 15. Id. at 10:36–40. The ’046 patent states that controller 11
tracks and monitors the throughput (e.g., data storage and retrieval) of data
compression system 12 and generates control signals to enable/disable
different compression algorithms 13 when the throughput falls below a
predetermined threshold. Id. at 10:40–45. In one embodiment of the ’046
patent, the system throughput that is tracked by controller 11 comprises a
number of pending access requests to the memory system. Id. at 10:45–47.
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Another embodiment of the ’046 patent is shown in Figure 2,
reproduced below.

Figure 2, above, illustrates a method for providing bandwidth sensitive data
compression. Id. at 12:65–66. The data compression system is initialized
during a boot-up process after a computer is powered on and a default
compression/decompression routine is initiated (step 20). Id. at 13:4–7.
According to the ’046 patent, the default algorithm comprises an
asymmetrical algorithm, because asymmetric algorithms provide “a high
compression ratio (to effectively increase the storage capacity of the hard
disk) and fast data access (to effectively increase the retrieval rate from the
hard disk).” Id. at 13:8–18. According to the ’046 patent, depending on the
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access profile, it “is preferable to utilize an asymmetrical algorithm that
provides a slow compression routine and a fast decompression routine so as
to provide an increase in the overall system performance as compared to
performance that would be obtained using a symmetrical algorithm.” Id.
at 12:2–6. The ’046 patent notes that symmetric routines “compris[e] a fast
compression routine.” Id. at 14:2–4.
2. Illustrative Claim
As noted above, Petitioner challenges independent claims 1 and 23,
with claim 1 reciting a method and claim 23 reciting a system. Claim 1,
reproduced below with brackets and letters added, is illustrative.
1. [a] A method comprising:
[b] compressing data using a first compression routine
providing a first compression rate, wherein the first compression
routine comprises a first compression algorithm;
[c] tracking the throughput of a data processing system to
determine if the first compression rate provides a throughput
that meets a predetermined throughput threshold, wherein said
tracking throughput comprises tracking a number of pending
requests for data transmission; and
[d] when the tracked throughput does not meet the
predetermined throughput threshold, compressing data using a
second compression routine providing a second compression
rate that is greater than the first compression rate, to increase the
throughput of the data processing system to at least the
predetermined throughput level, wherein the second
compression routine comprises a second compression
algorithm.
Ex. 1001, 20:14–32.
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E. Evidence of Record and Asserted Challenges to Patentability
Petitioner asserts the following challenges to patentability (Pet. 4):
Claim(s) Challenged 35 U.S.C. §1 References/Basis
1, 23 103(a) Kiel2
1, 23 103(a) Kobata3, Kiel
Petitioner submits the Declaration of Jeffrey J. Rodriguez, Ph.D.
(“Dr. Rodriguez”) in support of Petition for Inter Partes Review
(Ex. 1003). Patent Owner submits the Declaration of Kenneth A. Zeger,
Ph.D. (“Dr. Zeger”) in support of Patent Owner’s Response (Ex. 2004).
II. ANALYSIS
A. Relevant Legal Standards
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which
said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations, including: (1) the scope and content of

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(September 16, 2011) (“AIA”), included revisions to 35 U.S.C. § 100 et
seq. effective on March 16, 2013. Because the ’046 patent issued from an
application filed before March 16, 2013, we apply the pre-AIA versions of
the statutory bases for unpatentability.
2 Kiel et al., US 5,276,898, issued Jan. 4, 1994. Ex. 1004, (“Kiel”).
3 Kobata et al., WO 1999/026130 A1, published May 27, 1999. Ex. 1005,
(“Kobata”).
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the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations. See Graham v. John Deere
Co. of Kansas City, 383 U.S. 1, 17–18 (1966). “[I]t is error to reach a
conclusion of obviousness until all [the Graham] factors are considered.”
Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
banc) (citations omitted). “This requirement is in recognition of the fact
that each of the Graham factors helps inform the ultimate obviousness
determination.” Id. “To satisfy its burden of proving obviousness, a
petitioner cannot employ mere conclusory statements. The petitioner must
instead articulate specific reasoning, based on evidence of record, to
support the legal conclusion of obviousness.” In re Magnum Oil Tools
Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof
in inter partes review). Furthermore, Petitioner cannot satisfy its burden of
proving obviousness by employing “mere conclusory statements.” In re
Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
Thus, to prevail in an inter partes review, Petitioner must explain
how the proposed combinations of prior art would have rendered the
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challenged claims unpatentable. At this final stage, we determine whether a
preponderance of the evidence of record shows that the challenged claims
would have been obvious over the cited prior art.
B. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham, 383 U.S. at 17. “The importance of
resolving the level of ordinary skill in the art lies in the necessity of
maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person of ordinary
skill in the art is a hypothetical person who is presumed to have known the
relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573,
1579 (Fed. Cir. 1995). The level of ordinary skill in the art may be
reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001). Factors that may be considered in determining the
level of ordinary skill in the art include, but are not limited to, the types of
problems encountered in the art, the sophistication of the technology, and
educational level of active workers in the field. GPAC, 57 F.3d at 1579. In
a given case, one or more factors may predominate. Id. Generally, it is
easier to establish obviousness under a higher level of ordinary skill in the
art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed.
Cir. 2011) (“A less sophisticated level of skill generally favors a
determination of nonobviousness . . . while a higher level of skill favors the
reverse.”).
Petitioner argues that a person of ordinary skill in the art relevant to
the ’046 patent would have had “a bachelor’s degree in electrical
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engineering, computer science, or the equivalent, and three or more years of
experience with data compression systems and algorithms, including video
and image coding,” where a greater amount of practical experience could
offset a lower level of education, but where “a higher level of education
could offset a lesser amount of experience.” Pet. 5. Petitioner relies on the
Declaration of Dr. Rodriguez to support its contentions and he proffers the
same level of skill as that argued by Petitioner. Ex. 1003 ¶ 16.
Patent Owner proposes that a person of ordinary skill at the time of
the invention would have had “a bachelor’s degree in electrical engineering,
computer science, or a similar field with at least two years of experience in
data compression” or that such a person would have had “a master’s degree
in electrical engineering, computer science, or a similar filed with a
specialization in data compression.” PO Resp. 7. Patent Owner states that
its proposed level of skill “is the same level of skill that the experts and the
Board adopted in another IPR on the ’046 patent.” Id. at 7–8 (citing
IPR2019-00209, Paper 7 at 12). Dr. Zeger also adopts this definition of a
person of ordinary skill in the art for his analysis. Ex. 2004 ¶ 27.
Based on our review of the ’046 patent, the types of problems and
solutions described in the ’046 patent and cited prior art, and the testimony
of Dr. Rodriguez and Dr. Zeger, we find that a person of ordinary skill in
the art at the time of the claimed invention would have had “a bachelor’s
degree in electrical engineering, computer science, or a similar field with at
least two years of experience in data compression, or a master’s degree in
electrical engineering, computer science, or a similar field with a
specialization in data compression.”
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C. Claim Construction
We interpret a claim “using the same claim construction standard that
would be used to construe the claim in a civil action under 35 U.S.C.
282(b).” See Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R.
§ 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R.
§ 42.100(b) (2019)). Under that standard, claim terms are presumed to be
given their ordinary and customary meaning, as would have been
understood by one of ordinary skill in the art, in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). To rebut this presumption by acting as a lexicographer, the
patentee must give the term a particular meaning in the specification with
“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994). Limitations, however, are not to be read from
the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993). In addition, the Board may not “construe claims during
[an inter partes review] so broadly that its constructions are unreasonable
under general claim construction principles.” Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (overruled by Aqua
Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) on other grounds).
Our review does not identify any term whose construction is
necessary to our analysis. Accordingly, we decline to construe any claim
term of the ’046 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need
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only construe terms ‘that are in controversy, and only to the extent
necessary to resolve the controversy.’”).
D. Alleged Obviousness of Claims 1 and 23 of the ’046 patent
in View of Kiel
Petitioner contends claims 1 and 23 of the ’046 patent are
unpatentable under 35 U.S.C. § 103 as obvious in view of Kiel. Pet. 27–46;
Reply 2–16. Patent Owner disputes Petitioner’s contentions. PO Resp. 19–
36; Sur-Reply 2–19. For reasons that follow, we determine Petitioner has
not established by a preponderance of the evidence that claims 1 and 23 of
the ’046 patent are unpatentable under 35 U.S.C. § 103 as obvious in view
of Kiel.
1. Overview of Kiel (Ex. 1004)
Kiel, titled “System for Selectively Compressing Data Frames Based
upon a Current Processor Work Load Identifying Whether the Processor is
Too Busy to Perform the Compression,” generally describes data
communications using data compression. Ex. 1004, code (54), 1:10–11.
Kiel explains that data compression provides improved communications
performance by reducing the amount of transmitted data and/or reducing
the cost of data communications. Id. at 1:15–18. According to Kiel,
however, data compression adds to the processing overhead and can result
in inefficiency in a processor system, as the time spent either attempting to
or providing the data compression can cause a delay in the actual
transmission of the data and degraded performance. Id. at 1:58–60, 1:64–
67. Kiel, therefore, describes a method and computer system for
dynamically controlling the use of data compression for data
communications. Id. at 2:26–28. Kiel discloses that the method and
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computer system have a processor for selectively compressing a data
communication frame for data transfer between the computer system and at
least one other system. Id. at 2:59–62. One embodiment of Kiel is shown
in Figure 1, reproduced below.

Figure 1 “is a block diagram of a communications system which may be
employed in carrying out the data compression control method of the
invention.” Id. at 3:17–19. Kiel discloses that the communications system
includes host 10 and workstation controller (WSC) 20 attached to a
plurality of devices 40. Id. at 3:47–50. Kiel describes host 10 as having
processor 11 connected to controller interface 12, memory or storage 13
including database area 14 and input/output (I/O) buffers 16, and system
timer 18. Id. at 3:52–55. According to Kiel, WSC 20 includes processor 22
connected to host interface 21, device interface 23, memory or storage 24
including I/O buffers 26 and counter save area 27, and WSC timer 28. Id.
at 3:58–62. Kiel teaches that processor 22 of WSC 20 performs a data
compression control method as described below with respect to Figures 2
and 3. Id. at 3:65–4:2. As Kiel describes, an identified processor utilization
value is analyzed before data compression is performed. Id. at 4:10–13.
More specifically, Kiel discloses that when the WSC communication
hardware is busy, then a current data queue for the WSC communication
hardware is compared with a stored threshold data queue value for a
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particular line speed. Id. at 4:26–29. According to Kiel, when the current
queue value is greater than or equal to the threshold value, then the data
frame is compressed. Id. at 4:29–31. Other embodiments disclosed in Kiel
are shown in Figures 2 and 3, reproduced below.

Figures 2 and 3 are respective “flow chart[s] illustrating logical steps
performed by a processor of the communications system of [Figure] 1” for,
respectively, “defining a PC bring-up routine” and “transmitting a data
communication frame.” Id. at 3:20–25. Referring to Figure 2 (i.e., defining
a PC bring-up routine), Kiel teaches that processor 22 identifies a processor
utilization value PT for a particular line speed for data transmission at
block 204. Id. at 4:37–39. Kiel further teaches that an optional step can be
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performed to identify a manually entered line configuration compression
selection of compression on, compression off, or dynamically determining
whether data compression is performed on a per communication frame
basis, as represented at block 206. Id. at 4:55–60. According to Kiel, when
a dynamic compression selection is identified at block 206 of Figure 2, then
a last calculated processor utilization value PU is compared with the
processor utilization threshold value PT identified at block 204 as
represented by decision block 208. Id. at 4:60–64.
As further described in Kiel, when the last calculated processor
utilization value PU is less than the identified threshold value PT at
block 208, a compression preferred flag is checked in the bind response as
represented by a block 214. Id. at 5:3–11. Kiel then teaches that when the
compression on flag is not set or is off, then data compression is not used
and an internal compression flag is set to off as represented by block 216;
otherwise, when the compression on flag is set in the bind response, then
data compression is used and an internal compression flag is set to on as
represented by block 218. Id. at 5:11–17. Alternatively, according to Kiel,
when the last calculated processor utilization value PU is greater than the
identified threshold value PT at block 208, then the compression preferred
flag in the bind is set for compressing the data communication frame using
a first compression algorithm. Id. at 5:18–23. Kiel further discloses that
when the last calculated processor utilization value PU is less than or equal
to the identified threshold value PT at block 208, then the compression
preferred flag in the bind is set for compressing the data communication
frame using a second compression algorithm, where the first compression
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algorithm requires less processor time than the second compression
algorithm. Id. at 5:23–30.
Referring to Figure 3 (i.e., transmitting a data communication frame),
Kiel discloses that a frame to be transmitted is processed as represented by
block 302. Id. at 5:33–35. A transmission header is added to the data
communication frame that includes a default setting for no compression as
represented by block 304. Id. at 5:35–38. Kiel further discloses that an
optional step can be performed to identify a manually entered line
configuration compression selection for compression on, compression off,
or dynamically determining whether data compression is performed on a
per communication frame basis, as represented at block 306. Id. at 5:39–
44. Kiel teaches that when (at block 306) the line is manually configured as
“compression on,” then the data communication frame is compressed (at
block 308). Id. at 5:44–48. According to Kiel, when the dynamic
compression selection is identified at block 306, then a task threshold value
TT for the particular line speed is obtained from a stored look up table of
task threshold values as represented by block 312. Id. at 5:48–52.
Next, Kiel teaches that number of queued tasks TQ for processor 22 is
compared with the identified task threshold value TT as indicated by
decision block 314. Id. at 6:1–3. When it is determined that the number of
queued tasks TQ is less than or equal to the identified task threshold value
TT at block 314, then either the data communication frame is compressed at
block 308, or a send byte count threshold value BT for the particular line
speed is identified from a stored look up table of byte count threshold
values. Id. at 6:3–19. Furthermore, a byte count BQ for the communication
line hardware is checked and compared with the byte count threshold value
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BT obtained at block 318 as represented by decision block 320. Id. at 6:32–
35. When the communication line hardware byte count BQ is greater than
or equal to the byte count threshold value BT, then data compression is
performed at block 308. Id. at 6:35–38. Otherwise, according to Kiel,
when the communication line hardware byte count BQ is less than or equal
to the byte count threshold value BT, then data compression is not
performed. Id. at 6:38–41.
2. Analysis of Cited Art as Applied to Independent Claim 1
a. “A method of”
Petitioner contends Kiel teaches limitation 1[a] which recites “a
method,” based on Kiel’s disclosure of a method for dynamically selecting
data compression algorithms based on a number of queued processor tasks.
Pet. 27 (citing Ex. 1003 ¶¶ 62–67). Patent Owner does not dispute
Petitioner’s contentions at this time. See generally PO Resp. Nonetheless,
the burden remains on Petitioner to demonstrate unpatentability. See
Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015).
Regardless of whether the preamble is limiting, Kiel discloses an
“improved method and computer system for dynamically controlling the
use of data compression for data communications.” See Ex. 1004, 2:25–28,
9:34–62).
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b. “compressing data using a first compression routine providing a
first compression rate, wherein the first compression routine
comprises a first compression algorithm”
Limitation 1[b] recites “compressing data using a first compression
routine providing a first compression rate, wherein the first compression
routine comprises a first compression algorithm.” Ex. 1001, 20:15–18.
Petitioner contends Kiel teaches this limitation based on a
combination of Kiel’s Figures 2 and 3 and their associated descriptions.
Pet. 29–34. Specifically, Petitioner combines the compression method of
Figure 2 that selects between using a first compression algorithm and a
second compression algorithm, and the method of Figure 3 of comparing
the number of queued tasks TQ for processor 22 with task threshold TT to
select between compression and no compression. Id.
We note that with reference to Figure 2, Kiel discloses two
alternative methods for dynamically compressing data prior to transmission.
The first method selects, on a frame by frame basis, between compression
and no compression, depending on the utilization of the processor that
performs the compression. Ex. 1004, 4:32–5:17. The last calculated
processor utilization value PU is compared with a processor utilization
threshold value PT that is selected from a look-up table based on line speed
(given in bits per second). Id. at 4:37–64. If PU is less than PT (e.g., the
processor is not over-utilized), the processor compresses the next frame of
data. Id. If PU is greater than or equal to than PT (e.g., the processor is
over-utilized), the processor does not compress the next frame of data. Id.
at 5:3–17. Alternatively, the system selects, on a frame by frame basis,
between a first compression algorithm and a second compression algorithm,
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wherein the first compression algorithm requires less processor time than
the second compression algorithm. Id. at 15:18–31. We find that this
second method operates under the same principle as the first, namely if the
processor is over-utilized, the compression scheme that uses fewer
processor resources is selected. Id. Indeed, Kiel discloses that if PU is
greater than threshold value PT (e.g., the processor is over-utilized), the
system selects the first compression algorithm (which requires less
processor time than the second compression algorithm). Id. If PU is less
than PT (e.g., the processor is not over-utilized), the system selects the
second compression algorithm. Id.
Although Patent Owner disputes Petitioner’s challenge to
independent claim 1, Patent Owner does not address specifically this
limitation of the claim. Nonetheless the burden remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the entire record before us, including Kiel’s explicit
disclosure of “a first compression algorithm” (Ex. 1004, 5:20–23) and its
explanation regarding selecting between a first and second compression
algorithm (id. at 15:18–31), we determine Petitioner has shown by a
preponderance of the evidence that the combined teachings from Kiel teach
the challenged claim limitation.
c. “tracking a number of pending requests for data
transmission”
Limitation 1[c] recites “tracking the throughput of a data processing
system to determine if the first compression rate provides a throughput that
meets a predetermined throughput threshold, wherein said tracking
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throughput comprises tracking a number of pending requests for data
transmission.” Ex. 1001, 20:23–25.
Petitioner contends Kiel teaches this limitation, because the number
of queued tasks TQ in Kiel corresponds with pending requests for data
transmission. Pet. 34–35; Reply 2. According to Petitioner, Kiel’s
processor 22, a workstation controller (WSC), is described only in the
context of a data communication system. Id. at 36–37 (citing Ex. 1004,
3:47–51, 3:58–62). Petitioner argues a skilled artisan would have
understood that the purpose of processor 22, particularly in the context of
Figure 3, is to process requests for data transmission between host 10 and
devices 40. Id. at 37 (citing Ex. 1003 ¶ 80; Ex. 1004, 3:65–4:5, 4:17–22,
6:1–51). In particular,
a [person of ordinary skill in the art] reading Kiel would have
understood that its reference to tasks for the processor refers to
tasks associated with data transmission. Moreover, the actual
data in Table II further confirms that the tasks in the queue in
Kiel correspond to pending requests for data transmission. . . .
Specifically, as discussed above, higher thresholds are
associated with slower transmission line speeds, which a
[person of ordinary skill in the art] would have recognized is
done because slower transmission line speeds would have
provided more time for the processor to work through the queue
(since fewer frames can be transmitted per second) and more of
an incentive to apply compression (since data is transmitted at a
slower rate). . . . Consistent with this understanding, the
processor task threshold TT is a single digit integer (e.g.,
spanning a range of 1 to 5), which a [person of ordinary skill in
the art] would have recognized would logically correspond with
a number of pending requests for data transmission, and not
some broader understanding of a task, such as pending
instructions for the processor generally.
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Id. (citing Ex. 1003 ¶ 80). Petitioner further explains that the task queue
threshold TT, which is used in selecting whether to compress or not
compress the data, conveys “a predetermined maximum number of
[permitted] queued processor tasks for selecting data compression” for a
pending communication frame. Reply 3 (citing Pet. 34–35; Ex. 1004, cl. 8;
Ex. 1003 ¶¶ 76–84).
Petitioner also argues that even if it the tasks in Kiel could
correspond to other tasks, in addition to pending requests for data
transmission, a skilled artisan would have understood that there would be
instances in which Kiel’s processor would be used only to compress data
for transmission, as shown in Figure 3, and in such instances, the tasks in
Kiel would be limited to pending requests for data transmission. Id. at 38
(citing Ex. 1003 ¶ 81); Reply 3. Petitioner further contends “Kiel makes
clear that the queued tasks for selecting data compression are linked with
pending request for data transmission.” Reply 5. Moreover, Petitioner
argues
[a]t a minimum, in view of all of the above, a [person of ordinary
skill in the art] would been motivated to configure processor 22
in Kiel such that it operates as described in Kiel, with the ‘tasks’
taken into consideration being limited to pending requests for
data transmission. A [person of ordinary skill in the art] would
have been motivated to do so, for example, to prioritize data
transmission over other functions that the processor may be
responsible for.
Id. (citing Ex. 1003 ¶ 81).
Petitioner relies on the testimony of Dr. Rodriquez to support its
position. Reply 6–8. Dr. Rodriquez testifies that a person of ordinary skill
in the art would have understood that the queued tasks in Kiel are “pending
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requests for data transmission” because Table II in Kiel provides “higher
thresholds [] associated with slower line speeds” to “provide[] more time
for the processor to work through the queue (since fewer frames can be
transmitted per second).” Ex. 1003 ¶¶ 78–80; Pet. 36. Dr. Rodriquez
further testifies that Kiel’s processor 22 is described as only concerning a
data communications systems, plus TT is a single-digit integer so it must
refer to pending requests for data transmission and not some pending
instructions for the processor generally. Id. (citing Ex. 1004, 3:47–51,
3:58–62).
Patent Owner disputes Petitioner’s reliance on Kiel to meet this
limitation of claim 1 for several reasons. PO Resp. 19–29. Patent Owner
first contends the quantity 𝑇𝑇Q in Kiel does not count a number of pending
requests for data transmission. Id. at 21 (citing Ex. 2004 ¶ 76). According
to Patent Owner, 𝑇𝑇Q is just the processor task queue and has nothing to do
with the number of pending requests for data transmission. Id. Patent
Owner argues that Kiel, when read in the context of its specification and
with U.S. Patent No. 4,905,171 (“the ’171 patent,” which Kiel incorporates
by reference), demonstrates that the processor task queue is distinct from a
“communications task queue.” Id. Patent Owner further argues the ’171
patent establishes that a “processor task queue” does not, by design, contain
values that correspond to “pending requests for data transmission.” Id.
Patent Owner notes the “tasks” recorded in 𝑇𝑇Q are described in the ’171
patent and include: (1) a request from a user to the processor to run a
particular program to measure processor performance (Ex. 2005, 2:67–3:2
(“In block 53 the task is analyzed to see whether it is a request from the
user to start performance measurements. If so, the start performance
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measures subroutine of FIG. 3 is called, as shown in block 54.”)); (2) a
“system timer 18 specifying to retrieve performance measurements” (id. at
3:4–6.), and (3) the system timer requesting to stop performance
measurements (id., Fig. 2, object 58). PO Resp. 22 (citing Ex. 2004 ¶ 77).
According to Patent Owner, when Kiel is read specifically in the context of
the teachings of the ’171 patent, a person of ordinary skill in the art would
have understood a “processor task queue” did not contain “pending requests
for data transmission” because such requests, if any, would be counted and
stored in a different data structure entirely. Id. at 24 (citing Ex. 2004 ¶ 80).
Patent Owner next contends Kiel’s processor performs tasks other
than data transmission. PO Resp. 25–26. According to Patent Owner, a
person of ordinary skill in the art would have understood that Kiel’s
processor would perform various different types of tasks that the disclosed
system needed to perform. Id. at 26 (citing Ex. 2004 ¶ 82). Patent Owner
cites examples of tasks performed by processor 22 such as data
compression and data decompression (Ex. 1004, 4:22–23) as well as all the
tasks outlined in Figures 2–7 (id. at 3:65–67, 8:27–68). PO Resp. 26–27
(citing Ex. 2004 ¶¶ 82–85).
Patent Owner then contends Kiel does not teach or suggest counting
only data transmission tasks to make compression decisions. PO Resp. 28.
Patent Owner argues that “pending requests for data transmission” are not
the only tasks queued for Kiel’s CPU, because it is a “typical processor”
that is configured to perform a wide range of functions, many of which are
inarguably not “requests for data transmission.” PO Resp. 28 (citing
Ex. 2004 ¶¶ 87–88). Patent Owner further argues that data compression
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tasks are not data transmission tasks and the two tasks should not be
conflated. Id. at 29 (citing Ex. 2004 ¶ 89).
Patent Owner lastly argues a person of ordinary skill in the art would
not have been motivated to modify Kiel’s task queue to include only
“pending request for data transmissions.” Id. According to Patent Owner,
Petitioner’s proposed modification would negate the primary purpose of
Kiel’s invention, which is to efficiently manage CPU workload to improve
overall system efficiency. Id. at 30 (citing Ex. 2004 ¶ 91). Patent Owner
relies on the testimony of Dr. Zeger to support its position that a person of
ordinary skill in the art would not have prioritized data transmissions “over
other functions” for which the processor was responsible. Id. at 30–31. Dr.
Zeger testifies regarding processor utilization and opines:
The modification to Kiel proposed by Dr. Rodriguez, whatever
its specifics (which are not clear, as Dr. Rodriguez does not
explain the details of the modification), would essentially write
out PU from the system, even though processor utilization is a
fundamental concept at issue for Kiel. In other words, Kiel’s
system as modified by Dr. Rodriguez would not work for the
intended purposes stated in Kiel.

Ex. 2004 ¶ 94.
Petitioner disputes Patent Owner’s interpretation regarding the ’171
patent, how its disclosure relates to the ’046 patent, and what portions of
the ’171 patent are incorporated by reference into the ’046 patent. Reply 9–
10. According to Petitioner, the ’171 patent teaches that “a processor task
refers to a specific process to be carried out, rather than ‘pending
instructions for the processor generally’ as [Patent Owner] alleges.” Id. at 9
(citing PO Resp. 14–17, 21–24). Petitioner specifically argues that the
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tasks in the ’171 patent are not the same tasks that are tracked in the task
queue TQ in Kiel’s Figure 3 process and that task queue TQ in Kiel is only
discussed with reference to the process of Figure 3. Id. at 10, 11 (citing Ex.
1004, 5:31–6:51). Petitioner argues Kiel discloses that the tasks in the task
queue TQ are pending processor tasks for selecting compression for a data
communication frame. Id. at 11 (citing Ex. 1004, Fig. 3, 5:32–36; cl. 8).
Petitioner then concludes that the metric used for selecting whether to
compress a data communication frame is the count of the number of
pending queued processor tasks for selecting data compression. Id. at 11–
12 (id. at 5:32–6:51, cl. 8). The fact that Kiel uses a general process that
could perform other tasks is irrelevant, according to Petitioner. Id. at 12.
We agree with Petitioner that Kiel analyzes an identified processor
utilization value and the state of the work station’s communication
hardware before data compression is performed. See Ex. 1004, 4:9–13. We
also agree with Petitioner that Kiel is directed to a communications systems
in a work station that uses a general processor. Id. at 3:65–67. We do not
agree, however, that Kiel’s use of a general processor that could perform
other tasks is irrelevant as argued by Petitioner. Nor do we agree that
Kiel’s teachings regarding queued tasks TQ would have been understood by
a person of ordinary skill in the art to qualify necessarily as “tracking a
number of pending requests for data transmission” as required by the
challenged claim limitation. Rather, we understand Kiel to teach
determining how busy its processor is (as determined by either comparing a
processor utilization PU value to a predetermined threshold PT value for PC
bring-up routines or by comparing the number of queued tasks TQ for
processor 22 with an identified task threshold value TT for transmitting a
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data communication frame) and how busy its communication hardware is
(as determined by comparing the byte count BQ value to the byte count
threshold BT value) in order to determine if a data block should be
compressed prior to transmission from a device through a communication
line. Id. at 3:20–25, 4:60–64, 5:33–35, 6:1–41, Figs. 2, 3.
Although Dr. Rodriquez testifies that a person of ordinary skill in the
art would have understood that the queued tasks in Kiel are “pending
requests for data transmission” because Table II in Kiel provides “higher
thresholds [] associated with slower line speeds” to “provide more time for
the processor to work through the queue (since fewer frames can be
transmitted per second), we are not convinced. See Ex. 1003 ¶¶ 78–80.
Specifically, we do not agree with Dr. Rodriquez’s testimony because it is
conclusory and his testimony fails to reconcile his interpretation with Kiel’s
disclosure regarding processor 22. Kiel’s processor 22 is tasked with
performing PC bring up routines, compression of data blocks, and
transmitting a data communication frame over a communication line, which
seems to indicate that Kiel’s queued tasks TQ refers to all tasks performed
by the processor, not just “pending requests for data transmission.” See
Ex. 1004, 3:20–25, 3:65–4:13, 5:33–35, 6:1–3, Figs. 2, 3; see also Ex. 2004
¶ 91 (citing Ex. 1003 ¶ 81). Based on the disclosure of Klein, we agree
with Patent Owner’s position that it is at best unclear whether TQ is just the
number of communication requests or whether it is the number of processor
tasks TQ is the number of queued processor tasks. See Sur-Reply 4–5. As
we found above, we give little weight to Dr. Rodriguez’s testimony because
we found it conclusory and give it little weight. Thus, we find Petitioner
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has failed to provide sufficient evidence to show by a preponderance of
evidence that its interpretation of Kiel is correct.
We understand Petitioner’s reliance on the language of claim 8 in
Kiel to support its interpretation of processor tasks TQ to be related to data
transmission. Reply 12–13 (citing Ex. 1004, cl. 8, Fig. 3). Kiel’s claim 8,
however, explicitly states that the processor task queue threshold value
indicates a predetermined maximum number of queued processor tasks and
that predetermined number is used for selecting data compression for a
corresponding communication line speed value. See Ex. 1004, 10:41–47.
The language of claim 8 and the disclosure of Kiel fail to support
Petitioner’s position that the number of queued processor tasks TQ are
pending request for data transmission. We, thus, find Petitioner presents
insufficient evidence that a person of ordinary skill in the art would
understand to correlate the number of Kiel’s queued tasks TQ with an exact
number of pending requests for data transmission.
Accordingly, we determine Petitioner has not shown by a
preponderance of the evidence that Kiel’s disclosure of “tracking a number
of pending requests for data transmission” teaches the challenged claim
limitation.
d. “when the tracked throughput does not meet the predetermined
throughput threshold, compressing data using a second
compression routine providing a second compression rate that
is greater than the first compression rate, to increase the
throughput of the data processing system to at least the
predetermined throughput level”
The first part of limitation 1[d] recites “when the tracked throughput
does not meet the predetermined throughput threshold, compressing data
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using a second compression routine.” Ex. 1001, 20:25–32. Petitioner
contends this limitation is met by Kiel’s disclosed method for selecting a
compression algorithm based on comparing a tracked throughput (e.g., the
number of queued compression requests waiting to be processed) with a
predetermined threshold. Pet. 40 (citing Ex. 1003 ¶ 86). Petitioner argues
Kiel teaches this limitation based on a combination of Kiel’s Figures 2
and 3 and their associated descriptions. Id. (citing Pet. 29–34; Ex. 1003
¶ 86). Specifically, Petitioner combines the compression method of
Figure 2 that selects between using a first compression algorithm and a
second compression algorithm, and the method of Figure 3 of comparing
the number of queued tasks TQ for processor 22 with task threshold TT to
select between compression and no compression. Id. According to
Petitioner, the description for Figure 3 discloses the dynamic compression
scheme that selects between compression and no compression, but does not
explicitly disclose the scheme that selects between a first and second
compression algorithm. Pet. 32–34, 40–41. Petitioner argues, however,
that it would have been obvious to combine the processes of Figure 2 and
Figure 3 to arrive at the claimed subject matter. Id. at 32–34.
Patent Owner does not address this claim limitation. See generally
Prelim. Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3dat 1378.
As discussed previously, we find Petitioner fails to demonstrate that
Kiel teaches “tracking throughput” because it does not teach “tracking a
number of pending requests for data transmission.” See supra,
Section II.D.2.c. Because Kiel does not teach “tracked throughput,” it
cannot teach compressing data in response to said tracked throughput
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failing to meet a predetermined throughput threshold. Accordingly, we
determine Petitioner has failed to establish by a preponderance of the
evidence that Kiel must respond “when the tracked throughput does not
meet the predetermined throughput threshold, [by] compressing data using
a second compression routine providing a second compression rate that is
greater than the first compression rate” as required by the challenged claim.
e. “wherein the second compression routine comprises a second
compression algorithm”
The second part of limitation 1[d] recites “wherein the second
compression routine comprises a second compression algorithm.”
Ex. 1001, 20:32–33. Petitioner contends Kiel teaches this limitation,
because Kiel discloses “a second compression algorithm” because Kiel
discloses a processor that
dynamically compresses and then transmits the data using the
first compression algorithm in Kiel (“compressing data using a
second compression routine providing a second compression rate
that is greater than the first compression rate . . . wherein the
second compression routine comprises a second compression
algorithm”) in order to increase the throughput of the system
until the current task queue count no longer exceeds the
processor task queue threshold (”to increase the throughput of
the data processing system to at least the predetermined
throughput level”).
Pet. 41 (citing Ex. 1003 ¶ 87).
Patent Owner does not address specifically this limitation of
independent claim 1, but nonetheless the burden remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Having reviewed the entirety of the record and cited evidence, we
determine Petitioner has shown Kiel’s disclosure of a “second compression
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routine compris[ing] a second compression algorithm” satisfies the
challenged claim limitation. See Ex. 1004, 5:18–31, cls. 14, 15.
f. Summary regarding Independent Claim 1
Based on the foregoing, we conclude Petitioner has not demonstrated
by a preponderance of the evidence that challenged independent claim 1
would have been obvious under 35 U.S.C. § 103 in view of the teachings of
Kiel.
3. Analysis of Kiel as Applied to Independent Claim 23
Petitioner contends independent claim 23 of the ’046 patent is
unpatentable under 35 U.S.C. § 103 as obvious in view of Kiel, and
provides specific arguments for each challenged claim. Pet. 42–46. Patent
Owner does not address the specific limitations of independent claim 23,
but states that Petitioner fails to meet its burden with regards to these claims
for the same reason as put forth for claim 1 above. PO Resp. 19.
Additionally, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
We have considered carefully all arguments and supporting evidence
in light of the limitations recited in challenged independent claim 23,
including testimony from Dr. Rodriguez (see Ex. 1003 ¶¶ 76–137) and
Dr. Zeger (see Ex. 2004 ¶¶ 70–95). Although claim 23 is a system claim
and its limitations are not identical to the method steps of claim 1, they each
require tracking the throughput of a data compressing/compression system
by “tracking a number of pending requests for data transmission.”
Therefore, for the same reasons Petitioner fails to meet its burden with
regards to claim 1, we determine Petitioner fails to meet its burden with
regards to this specific claim. Accordingly, we conclude Petitioner has
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failed to demonstrate by a preponderance of the evidence that challenged
claim 23 would have been obvious under 35 U.S.C. § 103 in view of Kiel.
E. Alleged Obviousness of Claims 1 and 23 of the ’046 patent in View of
Kiel and Kobata
Petitioner contends claims 1 and 23 of the ’046 patent is unpatentable
under 35 U.S.C. § 103(a) in view of Kiel and Kobata. Pet. 46–66. Patent
Owner disputes Petitioner’s contentions. PO Resp. 26–43. For the reasons
that follow, we determine Petitioner has not established by a preponderance
of the evidence that claims 1 and 23 would have been obvious under
35 U.S.C. § 103 in view of Kiel and Kobata.
1. Prior Art Overview
a. Overview of Kiel (Ex. 1004)
See supra Section II.D.1.
b. Overview of Kobata (Ex. 1005)
Kobata, titled “Remote Control System Which Minimizes Screen
Refresh Time by Selecting Compression Algorithm,” generally describes an
emulation system in which screen refresh times associated with one
computer remotely controlling another computer are minimized. Ex. 1005,
code (54), 1:2–5. Kobata describes prior emulation systems where a screen
of a controlled computer (viewed by a user) is displayed at a screen of a
controlling computer (viewed by an administrator), so that the administrator
at the controlling computer can view what is displayed at the screen of the
controlled computer. Id. at 1:15–2:2. Kobata further describes that one of
the problems with prior emulation systems is that the screen refresh at the
administrator’s side is slow or not optimized. Id. at 2:3–5. Thus, in order
to speed up the screen refresh portion of the emulation system, low level
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drivers trapping graphic calls are eliminated in favor of increasing speed
through the alteration of the compression and decompression algorithms
used at the user and administrator sides to choose the appropriate ratio of
transmission time and compression time which matches the demographics
of the network and that of the user’s computer. Id. at 3:11–15. Figure 4 of
Kobata, reproduced below, is illustrative.

Figure 4 is a “block diagram of the subject system in which the
compression algorithm to be used by the user’s computer is automatically
selected based on the demographics of the network and the user’s computer,
which selection is transmitted to the administrator’s computer for use in the
corresponding compression algorithms therein.”
Id. at Fig. 4. Figure 4 is a “block diagram of the subject system in which
the compression algorithm to be used by the user’s computer is
automatically selected based on the demographics of the network and the
user’s computer, which selection is transmitted to the administrator’s
computer for use in the corresponding compression algorithms therein.” Id.
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at 6:23–7:2. Referring to Figure 4, each of the CPUs 16 and 18 is provided
with a selectable number of compression and decompression algorithms.
Id. at 8:11–12. In operation, each screen refresh cycle is provided with a
header containing the type of compression algorithm selected at the user’s
side by module 50. Id. at 8:21–22. This header is detected at 62 and the
appropriate algorithm is introduced to CPU 16 for appropriate
decompression. Id. at 9:3–4. Figure 6 of Kobata, which illustrates the
algorithm selection process and is reproduced below, is illustrative.

Figure 6 is a “flowchart illustrating the derivation of a ratio of send time to
compression time used in the algorithm selection module of [F]igure 4.”
Id. at Fig. 6. Figure 6 is a “flowchart illustrating the derivation of a ratio of
send time to compression time used in the algorithm selection module of
[F]igure 4.” Id. at 7:5–6. Kobata describes that algorithm select module 50
then computes how long it takes to compress a refresh cycle and how long
it takes to send this refresh cycle, where this operation is performed each
and every refresh cycle to calculate a ratio of send time to compression time
for each refresh cycle. Id. at 9:5–11. If the ratio is equal to 1, then the
highest compression algorithm is permitted to continue. Id. at 9:12–13. If
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the ratio R of send time to compression time is less than 1 then the
algorithm having the next lower compression is selected, which lowers the
compression time while at the same time increasing the send time. Id. at
9:13–15. Measurements are again taken for the next cycle and the ratio
recomputed. Id. at 9:15–16. The iterative process finally settles upon an
algorithm which optimally minimizes screen refresh time at the
administrator’s side. Id. at 9:16–17.
2. Analysis of the Prior Art as Applied to Independent Claims 1 and
23
Independent claims 1 (method) and 23 (system) recites similar
limitations and specifically require “tracking the throughput of a data
compressing/compression system” by “tracking a number of pending
requests for data transmission.” Ex. 1001, 20:19–25, 23:26–30.
Petitioner contends Kobata teaches this challenged limitation because
“Kobata makes clear that the calculated ratio represents the throughput of
the system in Kobata, and the predetermined ratio of 1 represents a
predetermined throughput threshold.” Pet. 51 (citing Ex. 1003 ¶ 108). Yet,
Petitioner then states “Kobata does not explicitly disclose that ‘said tracking
throughput comprises tracking a number of pending requests for data
transmission.’ However, this would have been obvious to a POSITA in
view of Kiel.” Pet. 51 (citing Ex. 1003 ¶ 109); see Reply 17–23.
Patent Owner disputes Petitioner’s position, arguing that the
proposed combination does not satisfy the limitation because Kiel does not
teach or suggest “tracking a number of pending requests for data
transmission.” PO Resp. 36–37.
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As discussed previously, we find Petitioner fails to provide sufficient
evidence to show by a preponderance of evidence that Kiel teaches
“tracking a number of pending requests for data transmission.” See supra,
Section II.D.2.c. Regarding Kobata, Petitioner’s declarant, Dr. Rodriquez,
admits Kobata does not disclose explicitly “said tracking throughput
comprises tracking a number of pending requests for data transmission”
(Ex. 1003 ¶ 109), while Patent Owner’s declarant, Dr. Zeger testifies that
Kobata’s “interative process” does not track pending requests (Ex. 2004 ¶¶
68). Based on the disclosure of Kobata in view of the testimony of both Dr.
Rodriquez and Dr. Zeger, we find that Petitioner has failed to demonstrate
by a preponderance of the evidence that Kobata teaches “tracking a number
of pending requests for data transmission.” See Pet. 51. Nor do we agree
with Petitioner that “tracking a number of pending requests for data
transmission” would have been obvious because we do not agree with
Petitioner that a person of ordinary skill in the art at the time of the
invention would have had reason to combine the teachings of Kiel and
Kobata. See Reply 17–23.
Kobata relates to emulation systems that allow an administrator to
“see” what’s happening at a user terminal. Ex. 1005, 1:15–17. Kobata
explains that a problem with prior emulation systems was that the screen
refresh rate at the administrator’s side was slow, or in general not optimized
to the demographics of the network and user’s terminal, resulting in delays
in refreshing the administrator’s screen to match what is happening on the
user terminal’s screen. Id. at 2:3–11. Kobata explains that the system is
optimized when the time it takes to send the data equals the time it takes to
compress the data, i.e., when the ratio of send time to compression time
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equals 1, and discloses selecting a compression algorithm accordingly. Id.
at 5:2–24 (disclosing, inter alia, “the compression algorithm selected is
based on the rate of send time to compression time, with the selection
seeking to cause this ratio to equal 1,” and “[t]he algorithm chosen is that
for which the ratio is as close to one as possible”); 6:2–10 (disclosing, inter
alia, that a ratio of 1 “corresponds to the most efficient utilization of the
available bandwidth and CPU power”), 9:12–17 (describing an iterative
process of algorithm selection until the ratio is equal to 1).
Given the provided testimony of both Dr. Rodriquez and Dr. Zeger,
as read in light of Kobata’s teaching that a send time to compress time ratio
of 1 is desirable, we find Petitioner has failed to provide sufficient evidence
to show by a preponderance of evidence that a skilled artisan would have
had reason to modify Kobata’s optimization system based on time to
compress and time to transmit with a system based on selection on the
number of queued/pending processor tasks. Although the number of
queued processor tasks in Kiel may provide an indication that the processor
resources are being heavily utilized, and therefore, indicates delay in
compressing data, the number of queued tasks does not appear to specify
the amount of time that it will take to compress a frame of data. This is in
contrast with Kobata, which is concerned with the actual amount of time it
takes to compress data. Given Kobata’s concern with achieving a send time
to compression time ratio of 1, Petitioner has not provided sufficient
explanation as to why a skilled artisan would have selected the compression
algorithm in Kobata’s system by looking at the number of queued processor
tasks.
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Based on the entirety of the record, we find Petitioner does not
provide sufficient rationale for why a person of skill in the art would have
combined the teachings from the cited prior art to arrive at the inventions
recited in the challenged claims. Accordingly, for this additional reason,
we determine Petitioner has not established by a preponderance of the
evidence that claims 1 and 23 would have been obvious under 35 U.S.C.
§ 103 in view of Kiel and Kobata.
III. CONCLUSION
Based on the full record before us, we determine Petitioner has failed
to show by a preponderance of the evidence that claims 1 and 23 of the ’046
patent would have been obvious in view of Kiel alone or in combination
with Kobata.
In summary:

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has not shown by a preponderance of the
evidence that claims 1 and 23 of the ’046 patent are unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.
Claims

35 U.S.C.
§
References/
Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 23 103 Kiel 1, 23
1, 23 103 Kiel, Kobata 1, 23
Overall
Outcome
1, 23
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PETITIONER:

Naveen Modi
Joseph Palys
Phillip Citroen
Daniel Zeilberger
Jason Heidemann
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
phillipcitroen@paulhastings.com
danielzeilberger@paulhastings.com
jasonheidemann@paulhastings.com

PATENT OWNER:

Philip X. Wang
C. Jay Chung
Kent N. Shum
Reza Mirzaie
Neil A. Rubin
RUSS AUGUST & KABAT
pwang@raklaw.com
jchung@raklaw.com
kshum@raklaw.com
rmirzaie@raklaw.com
nrubin@raklaw.com