Uniloc 2017 LLC

Patent Trials and Appeals Board

Jul 22, 2021

IPR2020-00479 (P.T.A.B. Jul. 22, 2021)

Trials@uspto.gov Paper 24
571-272-7822 Date: July 22, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

GOOGLE LLC,
Petitioner,
v.
UNILOC 2017 LLC,
Patent Owner.
____________________

IPR2020-00479
Patent 6,349,154 B1
____________

Before JENNIFER S. BISK, DAVID C. MCKONE,
and SHARON FENICK, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background and Summary
Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
inter partes review of claims 1–4 of U.S. Patent No. 6,349,154 B1
(Ex. 1001, “the ’154 patent”). Pet. 2. Uniloc 2017 LLC (“Patent Owner”)
filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Pursuant to
35 U.S.C. § 314, we instituted this proceeding. Paper 10, (“Dec.”).
Patent Owner filed a Patent Owner’s Response (Paper 12, “PO
Resp.”), Petitioner filed a Reply to the Patent Owner’s Response (Paper 14,
“Reply”), and Patent Owner filed a Sur-Reply to the Reply (Paper 16, “Sur-
reply”). An oral argument was held on May 13, 2021 (Paper 23, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
written decision under 35 U.S.C. § 318(a) as to the patentability of claims 1–
4. Based on the record before us, Petitioner has proved, by a preponderance
of the evidence, that claims 1–4 are unpatentable.

B. Related Matters
The parties indicate that the ’154 patent is at issue in Uniloc 2017
LLC v. Google LLC, No. 2:18-cv-00496 (E.D. Tex.). Pet. 1; Paper 3, 2. The
United States District Court for the Eastern District of Texas (“Texas court”)
transferred this case to the United States District Court for the Northern
District of California (“California court”). Ex. 1017. Petitioner states that
the California court found that another party held sufficient rights in the ’154
patent such that Patent Owner lacked standing to sue and, accordingly,
dismissed the litigation for lack of subject matter jurisdiction. Paper 13, 1
(citing Uniloc 2017 LLC v. Google LLC, No. 4:20-cv-05345-YGR, Dkt. 210
(N.D. Cal. Dec. 22, 2020)).
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C. The ’154 Patent
The ’154 patent describes a technique for receiving a sequence of
lower-resolution pictures, estimating motion in those pictures, and creating a
high-resolution still digital picture from the sequence of lower-resolution
pictures. Ex. 1001, 1:6–12. Figures 2 and 3, reproduced below, are
illustrative.

Figure 2 is a block diagram of a system for creating high-resolution pictures.
Id. at 2:15–17.
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Figure 3 depicts sequences of images as they are processed by prediction
encoder 2 of Figure 2. Id. at 2:18–19, 3:24–53.
With reference to Figures 2 and 3, image sensor 1 receives images Ai
(A1, A2, etc.) and generates digitized low-resolution pictures Bi (B1, B2, etc.).
Id. at 3:4–8. Pictures A1, A2, and A3 show three successive phases of a
moving object. Id. at 2:23–25. B1 is an autonomously encoded picture and
D1, showing the pixel values of B1, is applied to motion-compensated
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prediction encoder 2’s output and stored in frame memory 23. Id. at 3:22–
27. Motion estimator 24 calculates the amount of motion between
successive pictures B1, B2, and B3 to predictively encode pictures B2 and B3.
Id. at 3:28–32. Using the calculated motion vector, motion compensator 25
generates prediction picture Ci, which is subtracted from picture Bi to form
difference output picture Di. Id. at 3:34–37. Adder 22 adds prediction
image Ci and encoded difference Di and stores the sum in frame memory 23.
Id. at 3:37–39. Here, picture C2 is the motion-compensated prediction
picture for encoding picture B2, motion vector m12 has the value (1,½),
picture C3 is the motion-compensated prediction picture for encoding picture
B3, and motion vector m23 has the value (½,0). Id. at 3:40–51.
Encoded pictures Di and motion vectors m are stored on storage
medium 3 and transmitted through a transmission channel to motion-
compensated prediction decoder 4, which decodes the original sequence of
low-resolution pictures Bi and supplies them to processing circuit 5. Id. at
3:54–59, 4:1–4. The operations of processing circuit 5 are shown in
Figure 4, reproduced below:
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Figure 4 depicts a sequence of images as they are processed by processing
circuit 5 of Figure 2. Id. at 2:18–19, 4:1–38.
Up-sampler 51 up-samples pictures Bi to produce pictures Ei, in the
high-resolution domain. Id. at 4:6–8. Processing circuit 5 outputs high-
resolution picture G1 (for the first picture, the same as input picture E1) and
stores it in frame memory 54. Id. at 4:9–11. Motion-compensated picture F2
is obtained by shifting stored picture G1 by motion vector m'12, which has a
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value of (2,1), twice motion vector m12. Id. at 4:15–18. Adder 53 adds
picture F2 and picture E2 to produce picture G2, which is stored in memory
54. Id. at 4:13–15, 4:18–27. Picture G3 is obtained similarly from pictures
E3 and F3, and motion vector m'23, which has a value of (1,0), twice motion
vector m23. Id. at 4:17–18, 4:28–37. These steps are repeated for further
pictures in the sequence. Id. at 4:39–42.
Claim 1 is the only independent claim challenged in this proceeding.
The remaining challenged claims depend from claim 1. Claim 1, reproduced
below, is illustrative of the invention:
1. A method of creating a high-resolution still picture,
comprising the steps of:
receiving a sequence of lower-resolution pictures;
estimating motion in said sequence of lower-resolution
pictures with sub-pixel accuracy; and
creating the high-resolution still picture from said
sequence of lower-resolution pictures and said
estimated motion;
wherein the method comprises the steps of:
subjecting the sequence of pictures to motion-
compensated predictive encoding, thereby
generating motion vectors representing motion
between successive pictures of said sequence;
decoding said encoded pictures; and
creating the high-resolution picture from said decoded
pictures and the motion vectors generated in said
encoding step.

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D. Evidence
Petitioner relies on the references listed below.
Reference Date Exhibit
No.
Hwang US 5,666,160 Sept. 9, 1997 1005
Yoon US 5,532,747 July 2, 1996 1007

Petitioner also relies on the Declaration of Jeffrey J. Rodriguez, Ph.D.
(Ex. 1002), and the Rebuttal Declaration of Dr. Rodriguez (Ex. 1022).
Patent Owner does not rely on expert testimony.

E. The Instituted Ground of Unpatentability
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–4 1031

Hwang, Yoon

II. ANALYSIS
A. Claim Construction
For petitions filed after November 13, 2018, we construe claims
“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), including construing the
claim in accordance with the ordinary and customary meaning of such claim
as understood by one of ordinary skill in the art and the prosecution history

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Changes to § 103 apply to
applications filed on or after March 16, 2013. Because the ’154 patent has
an effective filing date before March 16, 2013, we refer to the pre-AIA
version of § 103.
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pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see also Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
The Texas court previously construed several claim terms. Ex. 1013,
9–39. Neither party challenged those constructions at the institution stage.
Pet. 5–6; Prelim. Resp. 22–23. Accordingly, we adopted those constructions
for purposes of the Institution Decision. Dec. 20–21. Those constructions
are summarized in the table below:
Claim Term Texas District Court Construction
“resolution”
(claims 1–4)
number of pixels
“estimating motion in said
sequence of lower resolution
pictures with sub-pixel accuracy”
(claims 1–4)
estimating motion, in said sequence
of lower resolution pictures, with
accuracy capable of representing
motion that is less than a single pixel
“motion-compensated predictive
encoding”
(claims 1–4)
predictive encoding based on motion
between a current picture and a
previously encoded picture
“generating motion vectors
representing motion between
successive pictures of said
sequence”
(claims 1–4)
generating motion vectors
representing motion of pixels from
positions in one picture to positions in
the next picture in the sequence
“motion vector(s)”
(claims 1–4)
vector(s) representing motion of a
block of pixels between two pictures
“sequence of I and P-pictures”
(claim 3)
sequence of I and P-pictures as
defined by MPEG standards at the
time of the invention
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Claim Term Texas District Court Construction
“recursively adding, in the high-
resolution domain, a current
decoded picture to a previously
created picture, said previously
created picture being subjected to
motion compensation in
accordance with the motion vector
which is associated with the
current decoded picture”
(claim 4)
recursively adding, in the high-
resolution domain, the pixel values of
a current decoded picture to the pixel
values of a previously created picture,
said previously created picture being
subjected to motion-compensation in
accordance with the motion vector
which is associated with the current
decoded picture

In the Response, Patent Owner argues that, “for all claim terms,” we
should “adopt the ordinary and customary meaning of the claim terms as
understood by a [person of ordinary skill in the art].” PO Resp. 28. As to
the Texas court’s constructions, Patent Owner does not adopt or advocate for
them, but argues that applying them “will result in the prior art not teaching
the elements of the ’154 Patent.” Id. at 28–29. In any case, Patent Owner
does not specifically challenge any of the Texas court’s constructions or
argue that they are incorrect. Nor does Patent Owner propose any express
construction for any claim term.
Petitioner argues that it showed, in the Petition, unpatentability under
the Texas court’s constructions but, if we were to adopt the plain and
ordinary meaning of the claims, there would be no dispute that the
challenged claims are unpatentable. Reply 2–3. However, Petitioner does
not specifically challenge any of the Texas court’s constructions.
Based on the complete record, we adopt the Texas court’s
constructions, as reflected in the table above. We do not find it necessary to
provide express claim constructions for any other terms. See Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
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Cir. 2017) (noting that “we need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy’”)
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999)).

B. Obviousness of Claims 1–4 over Hwang and Yoon
Petitioner contends that claims 1–4 would have been obvious over
Hwang and Yoon. Pet. 17–76. For the reasons given below, Petitioner has
shown obviousness by a preponderance of the evidence.
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the claimed subject matter and the prior art are “such that the
claimed invention as a whole would have been obvious before the effective
filing date of the claimed invention to a person having ordinary skill in the
art to which the claimed invention pertains.” We resolve the question of
obviousness on the basis of underlying factual determinations, including
(1) the scope and content of 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.2
See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).

1. Level of Skill in the Art
Petitioner, relying on the testimony of Dr. Rodriguez, contends that a
person of ordinary skill in the art “would have had a Bachelor’s degree in
Electrical Engineering, Computer Science, or the equivalent thereof, and two

2 The record does not include allegations or evidence of objective indicia of
nonobviousness.
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or more years of experience with data compression systems and algorithms,
including video coding.” Pet. 3–4 (citing Ex. 1002 ¶¶ 17–19). According to
Petitioner, “[m]ore education can supplement practical experience and vice
versa.” Id. at 4.
Patent Owner argues that Petitioner’s proposed level of skill is
“improper” for several reasons, but “does not offer a competing definition
for a person of ordinary skill in the art.” PO Resp. 20–27. However, Patent
Owner argues that “Google’s grounds and the factual support in the
Dr. Rodriguez’s Declaration are all based on a level of ordinary skill in the
art that is higher and more detailed than is warranted based on the record.”
Id. at 25. According to Patent Owner, “because the Petition applies a level
of skill in the art that is not supported by the record, [Petitioner] has failed to
meet its burden as to the challenged claims.” Id. at 27.
Patent Owner argues that Dr. Rodriguez does not indicate that he was
informed of the legal standard for determining the level of skill in the art and
failed to conduct a proper review. Id. at 20–21 (quoting Daiichi Sankyo Co.
v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing factors that
may be considered in determining the level of ordinary skill in the art)).
Petitioner argues that Dr. Rodriguez did consider the relevant factors. Reply
23–24 (citing Ex. 1002 ¶¶ 13–16, 18). We agree with Petitioner.
Dr. Rodriguez’s testimony shows that he considered factors relevant to
determining the level of skill in the art. Ex. 1002 ¶¶ 13–15, 18. Patent
Owner does not identify any factors that Dr. Rodriguez misapplied or how it
might have led to an incorrect level of skill.
Patent Owner next argues that Petitioner’s proposed level of skill,
particularly as to the terms “more education” and “practical experience,” is
too imprecise. PO Resp. 21–22. Patent Owner complains that it “cannot be
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applied with any precision or predictability.” Id. at 22. Petitioner argues
that Dr. Rodriguez did offer a specific level of skill, and that the language
Patent Owner finds objectionable “simply recognized the realities of
someone’s experience.” Reply 24 (citing Ex. 1002 ¶ 18). We agree with
Petitioner and do not find the proposed level of skill to lack precision. In
any case, Patent Owner does not point to any instances where the alleged
imprecision would have any impact on the outcome of this proceeding.
Patent Owner next argues that Dr. Rodriguez is not a person of
ordinary skill in the art, and, in particular, that he lacks two years of
experience with data compression systems and algorithms, which he would
need to qualify under the standard for one of ordinary skill that he proposes.
PO Resp. 22–23. According to Patent Owner, Dr. Rodriguez has engaged in
consulting activities in many different fields outside of data compression,
evidencing that he is “at most, . . . a generalist that has opined on a whole
host of technologies that have run the gamut of the electrical arts,” rather
than one with “any true expertise in data compression.” Id. at 23–25.
Petitioner responds that Dr. Rodriguez is the Director of the Signal and
Image Laboratory at the University of Arizona’s Department of Electrical
and Computer Engineering, teaches classes in digital image processing that
include material related to image and video compression, and does research
directed to image and video processing, including research dealing with
computing high-resolution images from low-resolution images. Reply 24–
26 (citing Ex. 1002 ¶¶ 3, 5–11). We agree with Petitioner that
Dr. Rodriguez is at least a person of ordinary skill in the art, both by virtue
of his research and teaching experience dealing with data compression and
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video coding and by virtue of advanced education.3 Moreover, Patent
Owner’s arguments do not point to any deficiency in Petitioner’s proposed
level of skill and, instead, appear to be merely an attack on Dr. Rodriguez’s
credentials in an effort to have us disregard his testimony in its entirety. See
PO Resp. 25 (“Google relies heavily on Dr. Rodriguez to demonstrate key
gaps in the prior art and motivation to combine. His opinions should be
given no weight for the reasons noted above.”), 27 (“For these reasons,
Dr. Rodriguez’s Declaration should be given no weight.”).
In the Institution Decision, we determined, on the preliminary record,
that Petitioner’s proposed level of skill is consistent with the technology
described in the Specification and the cited prior art. Dec. 22–23. Patent
Owner has proposed no alternative and has offered no evidence of its own to
contradict Petitioner’s proposal. On the complete record, we find, consistent
with Petitioner’s proposal, that a person of ordinary skill in the art would
have had a Bachelor’s degree in Electrical Engineering, Computer Science,
or the equivalent thereof, and two or more years of experience with data

3 Even if he were not a person of ordinary skill in the art, we would still
consider his testimony. To testify as an expert under Federal Rule of
Evidence 702, a person need not be a person of ordinary skill in the art, but
rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte
Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); accord SEB S.A.
v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010)
(upholding a district court’s ruling to allow an expert to provide testimony at
trial because the expert “had sufficient relevant technical expertise” and the
expert’s “knowledge, skill, experience, training [and] education . . . [wa]s
likely to assist the trier of fact to understand the evidence”); Mytee Prods.,
Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011)
(nonprecedential) (upholding admission of the testimony of an expert who
“had experience relevant to the field of the invention,” despite admission
that he was not a person of ordinary skill in the art).
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compression systems and algorithms, including video coding. Ex. 1002
¶¶ 17–19. We also find that Dr. Rodriguez’s level of skill is at least that of a
person of ordinary skill in the art.

2. Scope and Content of the Prior Art
a) Overview of Hwang
Hwang describes a high resolution digital zooming system for
enhancing the resolution of a camera image by detecting a camera motion
component from pixel images across more than one image frame. Ex. 1005,
1:6–11, 2:39–45. Figure 6, reproduced below, illustrates an example:

Figure 6 is a block diagram of a digital zooming system. Id. at 3:7–11.
Motion detector 61 receives an image signal as an input, detects
horizontal and vertical components of pixel motion, and outputs pixel
motion signal V(n) and subpixel motion signal v(n). Id. at 3:29–32. Area
detector 62 “adjusts the image signal P(x;n) according to the horizontal and
vertical pixel motions V(n) received from the motion detector 61, and
detects a zoom area in accordance with a zoom magnification factor m.”
Id. at 3:33–37. Zoomed image compensator 63 “spatially magnifies a
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sampling interval of the detected image” and adjusts the zoomed image
according to the subpixel motion signal v(n). Id. at 3:38–42. Image
interpolator 64 performs a convolution between the known pixel information
and a rectangle function, and extends the image resolution range to subpixels
adjacent to known pixels. Id. at 3:43–48. Image synthesizer 65 receives the
output of image interpolator 64 and a previous image signal, synthesizes
them, and, using an infinite impulse response (“IIR”) filter with a weighted
time value, outputs a resultant image signal. Id. at 3:49–54.

b) Overview of Yoon
Yoon describes a method of decoding an encoded image signal
supplied in the form of a series of encoded image frames. Ex. 1007, Abstr.
In its obviousness allegations, Petitioner cites to disclosure in Yoon’s
Description of the Prior Art. See, e.g., Pet. 35–37 (citing Prior Art Figs. 1, 2,
and related description). This background describes a hybrid coding
technique, which combines temporal and spatial compression techniques.
Ex. 1007, 1:23–27. An encoder is described with respect to Figure 1 and a
decoder is described with respect to Figure 2.
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Figure 1 is reproduced below:

Figure 1 is a block diagram of hybrid coder 100 (also referred to as encoder
100). Id. at 1:28–29, 3:3. A block of pixels from a digitized input frame is
fed to subtracter 101, where it is digitally combined with a predicted block
of pixels from the previous frame. Id. at 1:30–34. After additional
processing in transformer 102 and quantizer 103, the frame is fed to entropy
coder 104. Id. at 1:34–40. “At the encoder 100, each block, and thereby the
entire frame, is reconstructed by inversely quantizing and transforming the
quantized coefficients and adding them to the pixels of the corresponding
predicted block at a summer 107,” which stores the frame in memory 108
for use in constructing the next frame. Id. at 1:41–47.
Hybrid coder 100 also performs motion compensation, which “is a
process of predicting each block of pixels in a present frame from the pixels
in its previous frame based on an estimation of a translatory motion of the
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block between the present and the previous frames.” Id. at 1:56–62, Fig. 1
(motion compensated predictor 110). The estimated motion is based on
motion vectors that consist of horizontal and vertical components indicating
the offset of the predicted block’s location in the previous frame compared
to the present block’s location. Id. at 1:62–67, Fig. 1 (motion estimator
109).4 A motion vector can be a half-pixel resolution motion vector derived
from a full-pixel resolution motion vector. Id. at 2:1–10. “The half-pixel
resolution motion vectors, together with the entropy coded data, are
forwarded via the transmission channel to the associated decoder 200 for use
in the conducting motion compensated prediction therein.” Id. at 2:25–28.

4 The parties dispute whether Yoon shows motion estimator 109 generating
motion vectors representing motion between successive pictures of a
sequence. We address that dispute below.
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Decoder 200 is shown in Figure 2, reproduced below:

Figure 2 is a block diagram of decoder 200 that matches hybrid coder 100 of
Figure 1. Id. at 4:4–5, 1:47–50. Decoder 200 performs similar motion
compensated prediction using the half-pixel resolution motion vectors
received from encoder 100. Id. at 2:40–61.

3. Claims 1–4, Differences Between the Claimed Subject Matter and
Hwang and Yoon, and Reasons to Modify or Combine
Petitioner cites Yoon for the aspects of claim 1 related to deriving
motion vectors from subsequent lower-resolution pictures, encoding the
lower-resolution pictures and motion vectors, and decoding the lower -
resolution pictures and motion vectors. Petitioner cites Hwang for the
aspects of claim 1 related to receiving decoded lower-resolution pictures and
motion vectors and creating a high-resolution picture from the lower-
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resolution pictures and motion vectors. Pet. 38–40. Petitioner’s
Demonstrative A from the Petition, reproduced below, illustrates how
Petitioner proposes combining these aspects:

Demonstrative A is a picture in which Petitioner has combined a portion of
Hwang’s Figure 6 with blocks from Yoon’s Figures 1 and 2 and provided
annotations. Id. at 41.

a) Hwang’s teachings
As to the limitations of claim 1, Petitioner argues that Hwang’s
description of receiving input images teaches “receiving a sequence of
lower-resolution pictures.” Pet. 20–22 (citing Ex. 1005, 1:6–11, 2:39–44,
3:7–11, 3:29–32, 4:59–5:4, 6:33–51). Petitioner further contends that
Hwang’s description of motion detector 61 producing half-pixel resolution
motion vectors v(n) teaches “estimating motion in said sequence of lower-
resolution pictures with sub-pixel accuracy.” Pet. 23–25 (citing Ex. 1005,
2:39–45, 3:5–9, 3:29–32, 3:43–48, 4:57–5:4, 5:10–14, 6:32–41). Petitioner
further argues that Hwang’s description of processing input image data to
produce zoomed output data, specifically the operations in blocks 62–65 of
Figure 6, teaches “creating the high-resolution still picture from said
sequence of lower-resolution pictures and said estimated motion,” as recited
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in claim 1. Pet. 25–34. Petitioner supports its allegations with the testimony
of Dr. Rodriguez. Ex. 1002 ¶¶ 52–72.
Patent Owner argues that Hwang does not teach lower-resolution
pictures and high-resolution pictures, at least as the Texas court has
construed “resolution” (“number of pixels”). PO Resp. 30–34. Essentially,
Patent Owner argues that Petitioner has not shown that the pictures output
from Hwang’s digital zooming system have more pixels than the pictures
input into the system. Id. at 7.
Hwang “relates to a high resolution digital zooming system and
method which enhances the resolution of a camera image.” Ex. 1005, 1:9–
11. In its background, Hwang discusses various “methods to form high
resolution magnified images from small-sized low resolution images.” Id. at
1:19–20. According to Hwang, “[w]hen magnifying an image, the number
of pixels for displaying the image increases.” Id. at 1:15–17.
Nevertheless, Patent Owner argues, Hwang does not define “high
resolution” or describe that term in relation to other images. PO Resp. 8. In
particular, Patent Owner argues, Hwang does not define the pictures input to
the preferred embodiment digital zooming system as low resolution. Id.
Patent Owner argues that, rather than describing a system that magnifies an
entire image (thus increasing the number of pixels), Hwang describes a
system that only zooms a portion of an input image, resulting in an output
image that has the same number of pixels as the input image, or less. Id. at
8–15. According to Patent Owner, Hwang uses the term “high resolution” to
“convey how the resolution of the portion of the zoomed image (but not the
resolution of the entire input image) is increased using the technique
disclosed in Hwang.” Id. at 8–9; accord id. at 9 (“[T]he reference to ‘high
resolution’ in Hwang is in reference to the high resolution zoomed and
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magnified image, which is only a portion of the entire image.”), 11 (“A
[person of ordinary skill in the art] would have understood that the zoomed
image compensator 63 outputs just the zoomed image, not the entire input
image.”).
Hwang states that motion detector 61 “receives an image signal P(x;n)
as an input,” detects motion from the image signal, and outputs motion
signals V(n) and v(n). Ex. 1005, 3:29–32. As Patent Owner notes, Hwang
does not state a specific size (e.g., number of pixels) for image signal P(x;n).
PO Resp. 10; Sur-reply 3. Area detector 62 receives this image signal P(x;n)
and motion vector V(n) and “detects a zoom area in accordance with a zoom
magnification factor m.” Ex. 1005, 3:33–37. According to Patent Owner,
Hwang does not disclose a value or range for zoom magnification factor m.
PO Resp. 10. Hwang’s zoomed image compensator 63 receives the signal
output by area detector 62 and “spatially magnifies a sampling interval of
the detected image.” Ex. 1005, 3:38–40. Patent Owner argues that this
“detected image” is “the input images” and that the “sampling interval” is
“the zoomed in area” of the input images, and not the entire input image.
PO Resp. 10–11. See also Sur-reply 3 (“As explained in [Patent Owner’s]
Response, Hwang’s zoom image compensator 63 spatially magnifies just a
‘sampling interval’ (i.e., the zoomed in area) of the ‘detected images’ (i.e.,
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the input images) and outputs the ‘zoomed image,’ not the entire ‘input
image.’”).5
Hwang continues by describing that image interpolator 64 receives the
known pixel information corresponding to the spatially zoomed image and
extends the image by adding subpixels next to the known pixels. Ex. 1005,
3:44–49. Patent Owner argues that “[i]mage interpolator 64 receives the
‘zoomed image,’ not the entire input image,” and that
Because . . . the extension into subpixel resolution is only
performed on the spatially zoomed image p(i-v(v);n), not the
entire image, and because values for magnification factor are
not taught, there is no teaching in Hwang that the number of
pixels in the resultant image signal q(i;n) is higher than the
input images.
PO Resp. 12.
Patent Owner constructs an example that it argues shows how
Hwang’s system would operate, with an input image of 1616 pixels (256
pixels) and a zoom magnification factor m of 2. Id. According to Patent
Owner, in its example, the sampling interval would be an 88 region of the
original 1616 image, that sampling interval would be magnified by a

5 At the oral argument, Patent Owner argued that Hwang’s description of a
“zoom area” also supports its argument that Hwang does not teach
magnifying the entire input image. Tr. 31:17–23. Patent Owner does not
present this argument in its papers or provide any meaningful explanation of
it. Hwang does not define or describe “zoom area” other than to say that
area detector 62 “detects a zoom area in accordance with a zoom
magnification factor.” Ex. 1005, 3:33–37. Hwang’s mention of a “zoom
area” does not describe identifying a subset of an input image to magnify.
Tr. 27:20–23 (admitting that Hwang does not describe a zoom area less than
the entire input image). Moreover, as we explain below, the zoom
magnification factor does not identify a subset of an image to magnify.
Thus, Hwang’s association of the zoom area and zoom magnification factor
suggests that a zoom area is not a subset of an input image.
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factor of 2, and the resulting output image would be 1616 pixels (256
pixels), the same size as the input image. Id. at 12–14. Patent Owner argues
that if the zoom magnification factor was 4, the output image would be 88
pixels (64 pixels), a lower number of pixels than the input image. Id. at 14.
Petitioner responds by arguing that Hwang’s entire image is
magnified, and that the output image has more pixels than the input image
because pixels are added at subpixel locations next to the pixels from the
input image. Reply 5–10 (citing Ex. 1002 ¶¶ 62–69; Ex. 1022 ¶¶ 7–9).
Petitioner points to description in Hwang that “[w]hen magnifying an image,
the number of pixels for displaying the image increases,” and other
examples in which an input image is “magnified” without any indication that
the description is limited to only a portion of the input image. Id. at 11–13
(citing Ex. 1005, 1:15–18, 2:33–42; Ex. 1022 ¶¶ 5–6). Petitioner takes issue
with Patent Owner’s understanding of a sampling interval, arguing that it is
the distance between pixels and not a portion of the input image to be
magnified. Id. at 10–11.
We agree with Petitioner. Hwang does not state the numbers of pixels
in the input and output images of its preferred embodiment. However,
Hwang, in its background, explains that “[w]hen magnifying an image, the
number of pixels for displaying the image increases.” Ex. 1005, 1:15–17.
According to Hwang, “[g]enerally, methods to form high resolution
magnified images from small-sized low resolution images employ an
interpolation algorithm which only uses information from spatially adjacent
pixels in a static image.” Id. at 1:19–22. Although these statements in
Hwang are in its background, and do not expressly describe the preferred
embodiment, they evidence an understanding in Hwang that increasing
resolution from low to high involves increasing the number of pixels from
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the low resolution image to the high resolution image. In the preferred
embodiment, Hwang’s system does this by interpolating what a pixel value
likely would be between two known pixels, based on information from a
previous image and the estimated motion between the images, and adding
that pixel to the high-resolution output. Id. at 3:29–59.
Hwang further explains that, “[i]n conventional digital zooming
systems, the method used to spatially magnify image data is responsive only
to a partial area of the input image. Therefore, spatial resolution is inversely
proportional to a scale factor of a screen. This degrades image quality and
limits magnification.” Id. at 2:23–27. Hwang’s preferred embodiment,
however, is described as an improvement that does not suffer from the
limitations of such conventional systems. Id. at 2:33–35 (“It is another
object of the present invention to provide a digital zooming system which
magnifies an input image without degrading image quality.”), 6:42–50 (“As
described above, the present invention can obviate the limitations of spatial
resolution in a normal CCD having a limited number of pixels, without
requiring an enhanced high resolution CCD or a high power optical zoom
lens. Image information between pixels is determined by detecting a motion
component across a dynamic image. Accordingly, a high resolution image is
obtained and the degradation and noise generated when magnifying the input
image by interpolation are reduced.”). This further suggests that Hwang’s
technique can operate on an entire input image rather than limiting it to a
partial area of the input image.
Although Patent Owner argues that Hwang expressly describes only
magnifying a “sampling interval” of an input image (PO Resp. 10–14; Sur-
reply 3), this is a misstatement of Hwang’s teachings. Hwang defines a
“sampling interval” as “a distance between pixels.” Ex. 1005, 1:33–35 (“As
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shown in FIG. 1, an image is sampled by a regular sampling interval
(namely, a distance between pixels) about an input image.”). This is shown,
for example, in Figure 1 of Hwang, reproduced below:

Figure 1 of Hwang is a diagram illustrating the principles for sampling a
one-dimensional image signal of an input image. Id. at 2:55–56. As can be
seen, the sampling interval is the distance from one pixel (e.g., x) to the next
(e.g., x+1).
The zoom magnification factor m is the number of sub-pixels that will
be created between each pixel and the next. This can be seen in Figure 5,
reproduced below:
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Figure 5 of Hwang is a diagram showing a principle for interpolating an
image signal by a convolution process using a sampled input image and a
rectangle function. Id. at 2:66–3:2. According to Hwang,
Image interpolator 64 receives the known pixel information
corresponding to the spatially zoomed image p(i-v(n);n) from
the zoomed image compensator 63 as an input, performs a
convolution between the known pixel information and a
rectangle function, and thus extends the image resolution range
to subpixels adjacent to the known pixel.
Id. at 3:43–48. Figure 5 states that “Pixel width (dx) = Subpixel
width(di)  m.” Here, the width of a pixel is equal to the width of a
subpixel times the number of subpixels within the pixel, i.e., the zoom
magnification factor m. Ex. 1022 ¶¶ 6–7. Thus, in essence, zoom
magnification factor m can be used to calculate the number of additional
pixels that will be created within a sampling interval.
As noted above, Hwang describes that “[a]rea detector 62 . . . detects
a zoom area in accordance with a zoom magnification factor m,” and
“[z]oomed image compensator 63 receives the signal output from the area
detector 62 as an input, [and] spatially magnifies a sampling interval of the
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detected image.” Id. at 3:33–40. In light of the foregoing, we find that
Hwang describes detecting the amount by which to magnify an input picture
(detecting a zoom area in accordance with a zoom magnification factor) and
determining how many subpixels to add between each pixel and the next
(magnifying a sampling interval of the detected image) for the entire input
picture. Ex. 1022 ¶¶ 6–9 (expert testimony explaining that Hwang describes
creating new pixels for an entire input image). This is the most natural
reading of Hwang, and Patent Owner has introduced no persuasive evidence
to suggest otherwise. While Petitioner’s arguments are supported by the
expert testimony of Dr. Rodriguez, which we credit, Patent Owner offers no
expert testimony or other evidence of its own to support its attorney
argument.
In particular, Patent Owner offers no evidence in Hwang, and we find
none, suggesting that Hwang’s system first truncates the input picture or
otherwise selects only a subset of that picture before spatially zooming the
picture and adding subpixels to create an output picture. Nor does Patent
Owner offer any testimony or other evidence to rebut the expert testimony
offered by Petitioner on this point, which we find credible. Thus, upon
consideration of the complete record, including Dr. Rodriguez’s testimony
and the disclosure in Hwang, we find that Hwang describes receiving an
entire input image, adding pixels to that image by an amount determined
from the zoom magnification factor m, and outputting an image that has
more pixels than the input image. Ex. 1005, 3:29–4:4; Ex. 1022 ¶¶ 6–9.
This interpretation is consistent with the statement in Hwang’s background
that “[w]hen magnifying an image, the number of pixels for displaying the
image increases.” Ex. 1005, 1:15–17.
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Patent Owner also argues that a skilled artisan would have understood
a difference between the terms “zoom” and “magnification.” As we
understand Patent Owner’s argument, Patent Owner contends that “magnify”
refers to increasing the size of something generally, which could include the
whole image, while “zoom” refers to magnifying, or increasing the size, of
only a portion of an image. PO Resp. 11 (“A POSITA would have
understood that the zoomed image compensator 63 outputs just the zoomed
image, not the entire input image.”) (citing Ex. 2007, 5:7–10, Fig. 5;
Ex. 2008, 5:22–27, Fig. 3); Sur-reply 3–4 (“As explained in Uniloc’s
Response, Hwang’s zoom image compensator 63 spatially magnifies just a
‘sampling interval’ (i.e., the zoomed in area) of the ‘detected images’ (i.e.,
the input images) and outputs the ‘zoomed image,’ not the entire ‘input
image.’”); Tr. 22:23–24:5. Here, Patent Owner cites to the Loveridge and
Fling patents (Exs. 2007, 2008). Although Loveridge and Fling both have
pictures that show magnifying only a portion of an image (Figs. 5 and 3,
respectively), the portions of these references cited by Patent Owner appear
to use “magnify” and “zoom” interchangeably and without any connection
to choosing only a portion of an input image. Ex. 2007, 5:7–10; Ex. 2008,
5:22–27. Thus, we do not read Loveridge or Fling to support Patent
Owner’s position. In any case, we find that Hwang uses “zoom” and
“magnify” interchangeably. See, e.g., Ex. 1005, 2:4–5, 2:39–49, 5:55, 8:48,
8:52.
In sum, we find that Hwang teaches “receiving a sequence of lower-
resolution pictures” (Ex. 1005, 3:29–32 (“Motion detector 61 receives an
image signal P(x;n) as an input.”)); “estimating motion in said sequence of
lower-resolution pictures with sub-pixel accuracy” (id. at 3:29–32 (“Motion
detector . . . detects horizontal and vertical components of both a pixel
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motion and a subpixel motion, and outputs the pixel motion signal V(n) and
subpixel motion signal v(n).”)); and “creating the high-resolution still
picture from said sequence of lower-resolution pictures and said estimated
motion” (id. at 3:33–54 (describing area detector 62, zoomed image
compensator 63, image interpolator 64, and image synthesizer 65)).

b) Combination of Hwang and Yoon
Petitioner cites Yoon for “subjecting the sequence of pictures to
motion-compensated predictive encoding, thereby generating motion vectors
representing motion between successive pictures of said sequence,” as
recited in claim 1. Pet. 34–38. According to Petitioner, “[w]hile Hwang, as
discussed above, discloses that its motion detector 61 detects motion
between the received sequence of image frames based on subpixel accuracy
for the purpose of generating a high-resolution picture, Hwang does not
disclose the details of how its motion detector 61 carries out such motion
detection.” Id. at 34–35. Petitioner contends that Yoon describes a “well-
known motion detection technique of subjecting the input sequence of
pictures to motion-compensated predictive encoding, thereby generating
motion vectors representing motion between successive pictures of said
sequence,” and that a skilled artisan would have consulted Yoon for the
details of Hwang’s motion detector 61. Id. at 35, 37–38, 43 (“A [person of
ordinary skill in the art] would have understood that Yoon’s encoding
functionality incorporated into Hwang’s system could replace the motion
detector 61 of Hwang’s Figure 6 or be implemented as part of the motion
detector 61.”), 49 (“Hwang does not disclose the details of how its motion
detector 61 carries out such motion detection. Thus, a [person of ordinary
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skill in the art] would have been motivated to look elsewhere to implement
Hwang’s technique for detecting motion with subpixel accuracy.”).
Petitioner points to Yoon’s Figure 1 and corresponding description to
show that Yoon’s system uses a motion-compensated prediction method to
encode received images and generate motion vectors to a half-pixel accuracy
in accordance with MPEG standards. Pet. 35–37 (citing Ex. 1007, 1:56–
2:24, Figs. 1, 2; Ex. 1002 ¶¶ 76–79), 47–49 (citing Ex. 1002 ¶¶ 92–93).
Specifically, Petitioner contends that Yoon’s motion estimator 109, shown in
Figure 1 (reproduced above), generates half-pixel resolution motion vectors,
quantizer 103 outputs transformed and quantized image date, and entropy
coder 104 combines the motion vectors and image data. Id. at 36–37 (citing
Ex. 1007, 1:56–2:24, Figs. 1–2; Ex. 1002 ¶¶ 77–78).
Petitioner contends that Yoon’s hybrid coder 100 (Figure 1) transmits
the encoded image data along with the associated half-pixel resolution
motion vectors, to decoder 200, and that decoder 200 (Figure 2) decodes the
encoded differential image data based on the associated half-pixel resolution
motion vectors to output decoded video (i.e., a sequence of pictures).
Pet. 38 (citing Ex. 1007, 2:25–61). In Petitioner’s combination:
Yoon’s conventional encoder would have subjected the input
sequence of low-resolution pictures to motion-compensated
predictive encoding to thereby generate motion vectors
representing motion between successive pictures of the low-
resolution picture sequence at a subpixel accuracy . . .; [and]
the output from the conventional encoder and its processes (i.e.,
the encoded image data and the half-resolution motion vectors)
would have then been transmitted over a communication
channel (e.g., a limited bandwidth channel) to a location where
the high resolution zooming processes of Hwang would have
been carried out (e.g., the operations associated with area
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detector 62, zoomed image compensator 63, image interpolator
64, and image synthesizer 65).
Pet. 43 (citing Ex. 1002 ¶¶ 77–78).
Regarding “decoding said encoded pictures,” as recited in claim 1,
Petitioner argues that, in its combination, Yoon’s decoder 200 would have
received incoming encoded data from hybrid coder 100, separated the
received data into encoded image data and associated half-pixel resolution
motion vectors, and decoded the image data to produce uncompressed image
data that would have been fed into Hwang’s area detector 62. Pet. 44, 54–56
(citing Ex. 1007, 2:25–61; Ex. 1002 ¶¶ 88, 100–104).
Patent Owner responds that Yoon includes no teaching of how motion
vectors are encoded in hybrid encoder 100. PO Resp. 35. Instead, Patent
Owner argues, Yoon’s “Figure 1 depicts . . . block elements labeled ‘Motion
Compensated Predictor 110’ and ‘Motion Estimator 109’ but there is no
corresponding description in Yoon [](including in the First Paragraph
[Ex. 1007, 1:28–54]) of how these two specific elements function.” PO
Resp. 35. In Petitioner’s theory of Yoon, summarized above, Petitioner
relies on the three paragraphs of description in Yoon, at column 1, line 28,
through column 2, line 24, as being a continuous description of Yoon’s
Figure 1. Pet. 34–38. Patent Owner disputes this, arguing that only the first
paragraph (Ex. 1007, 1:28–54) describes Yoon’s Figure 1. PO Resp. 15–18.
Patent Owner argues that the second paragraph (Ex. 1007, 1:56–67)
describes an improvement upon the coder of Figure 1, which, in Patent
Owner’s view, means that this paragraph describes something other than
Figure 1. PO Resp. 18 (citing Ex. 1007, 1:56–57 (“The coding efficiency of
the hybrid coder 100 can be improved by using a motion compensation or
motion compensated prediction method.”)). Thus, Patent Owner argues,
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“the depiction of elements 110 (‘motion compensated predictor’) and 109
(‘motion estimator’) in Figure 1 are in error, and conflict with the written
description the prior art hybrid decoder 100 of Yoon.” Id.
As to the third paragraph (Ex. 1007, 2:1–24), Patent Owner argues
that the third paragraph is limited to describing “unnamed ‘further
enhancements’ in unnamed ‘some of the currently available schemes,’”
rather than describing the system of Figure 1. PO Resp. 18–19 (quoting Ex.
1007, 2:1–3 (“In some of the currently available schemes such as ISO/IEC
MPEG standards, for further enhancement of the coding efficiency, . . .”)).
Patent Owner argues that the final sentence of the third paragraph confirms
that it is a discussion of schemes described in other patents and publications
rather than of Yoon’s Figure 1. Id. at 19 (citing Ex. 1007, 2:22–24).
According to Patent Owner, the third paragraph’s description of motion
vector generation and half-pixel accuracy should not be applied to the hybrid
coder 100 described in the first paragraph. Id.
We agree with Petitioner. Yoon’s first paragraph describing Figure 1
details the functions of several blocks of coder 100, but not the functions of
motion compensated predictor 110 and motion estimator 109. Ex. 1007,
1:28–54. Yoon’s second paragraph transitions into a description of how the
“coding efficiency of the hybrid coder 100 can be improved by using a
motion compensation or motion compensated prediction method,” and
describes a process of motion compensated prediction “based on an
estimation of a translator motion of the block between the present and the
previous frames.” Id. at 1:55–62. The natural reading of this description is
that it is continuing the description of Figure 1 and, specifically, is
explaining the functionality of the modules labeled in Figure 1 as “motion
compensated predictor” 110 and “motion estimator” 109. In other words,
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the description of “an estimation of a translator motion of the block between
the present and the previous frames,” Ex. 1007, 1:61–62, describes the
functionality of motion estimator 109, which, as shown in Figure 1, receives
as inputs a present frame and a frame stored in frame memory 108.
Likewise, the description of “a process of predicting each block of pixels in
a present frame from the pixels in its previous frame based on an estimation
of a translatory motion of the block between the present and the previous
frames,” id. at 1:59–62, describes the functionality of motion compensated
predictor 110, which, as shown in Figure 1, takes as inputs a frame from
frame memory 108 and the output of motion estimator 109. Yoon’s mention
of improvement (id. at 1:55–56) is in reference to motion estimation making
coder 100 more efficient, not a transition to a description of a separate
embodiment. Patent Owner’s contrary reading is, at best, strained.
As to the third paragraph (Ex. 1007, 2:1–24), it is a continuation of the
description of Figure 1, and specifically continues to describe coder 100’s
generation of motion vectors. This is confirmed by the next paragraph (id. at
2:25–28), which states that “[t]he half-pixel resolution motion vectors,
together with the entropy coded data, are forwarded via the transmission
channel to the associated decoder 200 for use in the conducting motion
compensated prediction therein.” Here, Yoon describes packaging the
entropy coded data with motion vectors and transmitting them to the decoder
of Figure 2. This is consistent with Figure 1, which shows entropy coder
104 receiving frames from quantizer 103 and motion vectors from motion
estimator 109, and outputting them “to decoder,” which we take as a
reference to decoder 200 of Yoon’s Figure 2. Patent Owner’s arguments to
the contrary have no merit.
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In sum, Yoon describes hybrid coder 100 performing motion
compensated prediction and generation of half-pixel resolution motion
vectors based on present and past input frames. Ex. 1007, 1:56–2:10, Fig. 1
(motion estimator 109, motion compensated predictor 110). We find that
this teaches “subjecting the sequence of pictures to motion-compensated
predictive encoding, thereby generating motion vectors representing motion
between successive pictures of said sequence,” as recited in claim 1. We
further find that Yoon’s description of decoder 200 receiving the output of
coder 100 and decoding the received data into half-pixel resolution motion
vectors and uncompressed image data teaches “decoding said encoded
pictures,” as recited in claim 1. Ex. 1007, 2:25–61.
As to “creating the high-resolution picture from said decoded pictures
and the motion vectors generated in said encoding step,” as recited in
claim 1, Petitioner contends that Yoon teaches that “[a] demultiplexor within
the decoder e.g., like the demultiplexor 201 in the decoder 200 in Yoon’s
Figure 2) would have received the incoming encoded data and separated the
encoded image data and the associated half-resolution motion vectors.”
Pet. 44. The image data and the motion vectors demultiplexed by Yoon’s
decoder 200 would then have been fed as inputs to Hwang’s area detector 62
and the remaining image processing components of Hwang’s digital
zooming system shown in Figure 6 (i.e., zoomed image compensator 63,
image interpolator 64, and image synthesizer 65), which would have created
a high-resolution picture. Id. at 56–62.
As to this final limitation of claim 1, Patent Owner repeats its
arguments, detailed above, that Yoon does not teach a hybrid coder that
creates half-pixel resolution motion vectors. PO Resp. 36–38. These
arguments do not rebut Petitioner’s showing for the reasons given above.
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We find that the combination of Hwang and Yoon teaches “creating
the high-resolution picture from said decoded pictures and the motion
vectors generated in said encoding step,” as recited in claim 1.
In sum, on the complete record, we find that the combination of
Hwang and Yoon teaches each limitation of claim 1.

c) Reasons to combine Hwang and Yoon; reasonable expectation
of success
Petitioner contends that a skilled artisan would have combined Yoon’s
teachings with those of Hwang such that Yoon’s video compression
technology would have reduced the data required to transmit video over a
limited-bandwidth communication channel in applications such as
surveillance and remote sensing. Pet. 39 (citing Ex. 1002 ¶ 83; Ex. 1007,
1:13–23 (explaining that data compression was a known technique for
reducing the volume of data to accommodate available bandwidth)), 51–53.
Here, Petitioner relies on the uncontroverted testimony of Dr. Rodriguez,
which we credit. Ex. 1002 ¶¶ 81–84. Petitioner also contends that MPEG
encoding, described in Yoon, was a widely used encoding scheme, as the
’154 patent itself acknowledges. Id. at 39–40 (citing Ex. 1007, 1:23–2:61;
Ex. 1001, 1:63–65, 4:57–60), 52–53. Dr. Rodriguez testifies that a skilled
artisan “would have had the capability and knowledge to implement the
above modification to Hwang while ensuring that Hwang’s image
processing techniques performed properly and would have expected the
combined Hwang-Yoon process to perform efficient and effective
image/video processing without detracting from the processes disclosed by
Hwang.” Ex. 1002 ¶ 98. We credit this testimony as well.
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Patent Owner does not specifically challenge Petitioner’s proposed
reasons to combine Hwang and Yoon. Rather, Patent Owner argues that
Petitioner’s “grounds and the factual support in . . . Dr. Rodriguez’s
Declaration are all based on a level of ordinary skill in the art that is higher
and more detailed than is warranted based on the record,” that Petitioner
“relies heavily on Dr. Rodriguez to demonstrate key gaps in the prior art and
motivation to combine,” and that Dr. Rodriguez’s “opinions should be given
no weight for the reasons noted above.” PO Resp. 25. For the reasons given
above, Petitioner’s and Dr. Rodriguez’s statement of the level of skill in the
art is correct, and we credit Dr. Rodriguez’s testimony. Thus, Patent
Owner’s arguments do not rebut Petitioner’s showing.
On the complete record, we find that a skilled artisan would have had
reasons, with rational underpinning, to combine Hwang and Yoon, and that
the skilled artisan would have had a reasonable expectation of success.

d) Dependent claims 2–4
Claim 2 depends from claim 1 and adds “the step of storing the
encoded pictures on a storage medium.” Dr. Rodriguez testifies that, in an
MPEG encoder/decoder system, such as shown in Yoon’s Figures 1 and 2,
encoded pictures necessarily would have been stored in buffers. Ex. 1002
¶¶ 120–121; Pet. 62–65. Dr. Rodriguez relies on a textbook describing the
MPEG standard (Joan L. Mitchell et al., MPEG VIDEO COMPRESSION
STANDARD (1996), 363–64, 370–71 (Ex. 1006, “Mitchell textbook”)).
Petitioner contends that the combined system of Hwang and Yoon would
have had such a buffer. Pet. 66–67; Ex. 1002 ¶¶ 122–123. We credit
Dr. Rodriguez’s uncontroverted testimony and find that Hwang and Yoon
teach the additional limitation of claim 2.
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Claim 3 depends from claim 1 and adds “wherein the step of encoding
the sequence of pictures comprises the use of an MPEG encoder which is
arranged to produce a sequence of I and P-pictures.” Dr. Rodriguez testifies
that an MPEG-compliant encoder, such as that described in Yoon’s Figure 1,
necessarily would have produced a sequence of I and P pictures. Ex. 1002
¶¶ 125–128; Pet., 67–71. Dr. Rodriguez relies on the Mitchell textbook
(Ex. 1006, 56–58). We credit Dr. Rodriguez’s uncontroverted testimony and
find that Hwang and Yoon teach the additional limitation of claim 3.
Claim 4 depends from claim 1 and adds “wherein the creating step
includes recursively adding, in the high-resolution domain, a current
decoded picture to a previously created picture, said previously created
picture being subjected to motion-compensation in accordance with the
motion vector which is associated with the current decoded picture.” We
find that Hwang’s image synthesizer 65, including adder 653, performs this
function. Ex. 1005, 3:49–4:4, 5:36–53; Pet. 71–76; Ex. 1002 ¶¶ 130–138.
Thus, we find that Hwang and Yoon teach the additional limitation of
claim 4.
Patent Owner does not challenge Petitioner’s allegations as to
claims 2–4, other than to argue that claims 2–4 are patentable because they
depend from claim 1. As explained above, claim 1 is not patentable.
In sum, on the complete record, we find that the combination of
Hwang and Yoon teaches each limitation of claims 2–4 and that a skilled
artisan would have had reasons, with rational underpinning, to combine
Hwang and Yoon, with a reasonable expectation of success

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4. Conclusion of Obviousness
As explained above, the combination of Hwang and Yoon teaches
each limitation of claims 1–4. Petitioner has introduced persuasive evidence
that a skilled artisan would have had reasons to combine the teachings of
Hwang and Yoon with a reasonable expectation of success. Patent Owner
does not argue or introduce evidence of objective indicia of nonobviousness.
In sum, upon consideration of all the evidence, we conclude that Petitioner
has proved by a preponderance of the evidence that claims 1–4 would have
been obvious over Hwang and Yoon.

III. PATENT OWNER’S ARGUMENT UNDER ARTHREX
Patent Owner argues that the Federal Circuit determined in Arthrex,
Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), that
Administrative Patent Judges were appointed unconstitutionally, but that the
Federal Circuit’s remedy was inappropriate and insufficient to cure the
constitutional violation. PO Resp. 39–42; Sur-reply 6–7.
We decline to consider Patent Owner’s constitutional argument
because the U.S. Supreme Court addressed this issue in United States v.
Arthrex, Inc., 141 S. Ct. 1970 (2021).

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IV. CONCLUSION6
Petitioner has shown by a preponderance of the evidence that claims
1–4 would have been obvious over Hwang and Yoon.

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED, based on a preponderance of the evidence, that claims 1–
4 are unpatentable; and
FURTHER ORDERED, because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

6 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35 U.S.C. § Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–4 103 Hwang, Yoon 1–4
Overall
Outcome
1–4
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FOR PETITIONER:
Naveen Modi
Joseph E. Palys
Quadeer A. Ahmed
Paul Hastings LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
quadeerahmed@paulhastings.com
PH-Google-UnilocIPR@paulhastings.com

FOR PATENT OWNER:
Ryan Loveless
Brett Mangrum
James Etheridge
Brian Koide
Jeffrey Huang
Etheridge Law Group
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
brian@etheridgelaw.com
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