Velos Media, LLC

Patent Trials and Appeals Board

Sep 29, 2020

IPR2019-00763 (P.T.A.B. Sep. 29, 2020)

Trials@uspto.gov Paper 48
571-272-7822 Entered: September 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS INC.,
Petitioner,

v.

VELOS MEDIA, LLC,
Patent Owner.
____________

IPR2019-00763
Patent 10,110,898 B2
____________

Before JENNIFER S. BISK, MONICA S. ULLAGADDI, and
AARON W. MOORE, Administrative Patent Judges.

ULLAGADDI, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All of the Challenged Claims to be Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
Unified Patents Inc.1 (“Petitioner”) requested an inter partes review
of claims 1, 3–5, 7, and 8 (the “challenged claims”) of U.S. Patent No.
10,110,898 B2 (Ex. 1001, “the ’898 patent”). Paper 2 (“Petition” or “Pet.”).
Velos Media, LLC (“Patent Owner”) filed a Preliminary Response. Paper 7
(“Prelim. Resp.”). Pursuant to Board authorization, Petitioner filed a Reply
(Paper 9, “Prelim. Reply”) to Patent Owner’s Preliminary Response and
Patent Owner filed a Sur-Reply (Paper 10, “Prelim. Sur-Reply”).
On October 1, 2019, we entered a Decision on Institution (“Institution
Decision” or “Inst. Dec.,” Paper 11) instituting an inter partes review as to
all of the challenged claims on all of the grounds set forth in the Petition.
After institution of trial, Patent Owner filed a Patent Owner Response
(“PO Resp.,” Paper 26), to which Petitioner filed a Reply (“Pet. Reply,”
Paper 31).2 Patent Owner filed a Sur-reply (“Sur-Reply,” Paper 33).3 A
hearing was held on July 8, 2020. The transcript of the hearing has been
entered into the record. Paper 46 (“Transcript” or “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This final written decision
is issued pursuant to 35 U.S.C. § 318(a). As explained below, we conclude
Petitioner has shown by a preponderance of the evidence that claims 1, 3–5,
7, and 8 of the ’898 patent are unpatentable.

1 Petitioner has informed us that Unified Patents Inc. has changed its name
to Unified Patents, LLC. Paper 25.
2 Ex. 1044 is the redacted version of the Patent Owner’s Response. Ex. 1054
is the redacted version of the Petitioner’s Reply.
3 Ex. 1055 is the redacted version of Patent Owner’s Sur-Reply.
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II. BACKGROUND
A. Related Proceedings
Petitioner and Patent Owner indicate that the ’898 patent is not
asserted in any related district court proceedings. Paper 4, 2; Pet. 57.
Petitioner indicates that the application underlying the ’898 patent “claims
the benefit of the filing date of U.S. Patent Application No. 13/744,759,” and
that “there are three currently pending applications that claim the benefit of
the filing date of [that] common parent [No. 13/744,759] to the ’898 patent:
U.S. Patent Application Nos. 15/253,035; 16/111,961; and 16/239,010.”
Pet. 57.
Although Patent Owner stated, in its Preliminary Response, that
“Petitioner has filed a total of thirteen requests for IPR against Velos
patents,” specifically, IPR2019-00194, IPR2019-00635, IPR2019-00660,
IPR2019-00670, IPR2019-00707, IPR2019-00710, IPR2019-00720,
IPR2019-00749, IPR2019-00757, IPR2019-00763, IPR2019-00806,
IPR2019-00883, and IPR2019-01130, other than the instant proceeding,
none of these proceedings appear to concern either the ’898 patent or a
patent related to the ’898 patent. Prelim. Resp. 2 n.1.
B. The ’898 Patent (Ex. 1001)
The ’898 patent concerns extending chroma quantization parameters
to have, for example, the same range as luma quantization parameters (e.g.,
0 to 51). Ex. 1001, code (57). The ’898 patent discloses that, “[p]reviously,
values of Chroma QP [quantization parameters] only extended up to 39.” Id.
The ’898 patent discloses determining the chroma quantization parameters
based on luma quantization parameters and picture level chroma offsets. Id.
More particularly, the ’898 patent discloses two equations for determining
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quantization parameters for chroma components Cb and Cr, respectively,
using picture-level offsets. Id. at 5:8–10. These equations, labeled
equations (1) and (2), are reproduced below:
𝑄𝑃𝐶𝑏 = 𝐶𝑙𝑖𝑝 (0, 51, 𝑄𝑃𝑌 + Cb_QP_offset)
𝑄𝑃𝐶𝑟 = 𝐶𝑙𝑖𝑝 (0, 51, 𝑄𝑃𝑌 + Cr_QP_offset)
Equations 1 and 2 above determine the two respective quantization
parameters between 0 and 51, based on luma quantization parameter, QPy
and Cb_QP_offset or Cr_QP_offset, which are the two chroma QP offset
parameters. Id. at 5:11–19. The ’898 patent further discloses equations for
calculating the same quantization parameters using slice-level offsets. Id. at
5:33–37 (Eqns. 3 and 4).
C. Challenged Claims
Challenged claims 1 and 5 are independent. Challenged claims 3, 4,
7, and 8 depend therefrom. Independent claim 1 is illustrative and
reproduced below.
1. A decoding apparatus, comprising:
circuitry configured to:
set a first chroma quantization parameter (QP) included
in a chroma QP range from 0 to 51 equal to a luma QP range,
based on a parameter including a picture level chroma QP offset
added to a luma QP; and
inverse quantize quantization data that is decoded from a
bit stream, based on the first chroma QP.

Ex. 1001, 8:44–51.
D. Proposed Grounds of Unpatentability
Petitioner supports the following challenges with the First and Second
Declarations of Dr. Joseph P. Havlicek (Exs. 1002, 1047).
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Reference(s) Basis4 Claims Challenged
Advanced Video Coding for Generic
Audiovisual Services, ITU-T5
Recommendation H.264 (11/2007) (Ex.
1004, “H.264”)
§ 103 1, 3–5, 7, and 8
H.264 in view of U.S. Patent Application
Publication No. 2006/0018559 A1 to Kim
et al. (Ex. 1006, “Kim”)
§ 103 1, 3–5, 7, and 8
Patent Owner disputes Petitioner’s challenges and relies on the
Declaration of Iain Richardson (Ex. 2009).
III. ANALYSIS
A. Principles of Law
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 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,

4 Because the application leading to the ’898 patent claims an effective filing
date before March 16, 2013, patentability is governed by the version of
35 U.S.C. § 103 preceding the Leahy-Smith America Invents Act (“AIA”),
Pub L. No. 112–29, 125 Stat. 284 (2011). See Ex. 1001, code (22), (60),
(63).
5 ITU-T stands for International Telecommunication Union
Telecommunication Standardization Sector.
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i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
“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”)). The 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) (citing Tech. Licensing Corp.
Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
burden of proof in an 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 challenged
claims unpatentable. We analyze the challenges presented in the Petition in
accordance with the above-stated principles.
B. Claim Construction
For inter partes reviews filed on or after November 13, 2018, we
apply the same claim construction standard used by Article III federal courts
and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc), and its progeny. See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51340, 51,340, 51,358 (Oct.
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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)). Because the instant Petition
was filed on March 6, 2019, we apply that standard here. Accordingly, we
construe each challenged claim of the ’898 patent to generally have “the
ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.”
37 C.F.R. § 42.100(b).
Petitioner does not propose a construction for any claim term. Pet. 18
(“Petitioner submits that no claim term or phrase in the challenged claims
requires an express construction,” and “[t]herefore, the analysis presented in
this Petition applies the plain and ordinary meaning of the claim language as
it would have been understood by a POSA [Person of Ordinary Skill in the
Art].”).
In its Preliminary Response, Patent Owner proposed to construe the
phrase “a chroma QP range from 0 to 51 equal to a luma QP range” recited
in claims 1 and 5 as “a chroma QP range including values 0 to 51, said
chroma QP range being equal to a luma QP range including values 0 to 51.”
Prelim. Resp. 17–18. Patent Owner supported its proposal by arguing that
“the parameter required by the challenged claims must have a range from 0
to 51 under a particular set of conditions.” Id. at 16 (emphasis added).
Patent Owner now contends that its “reference to ‘a single set of
conditions’ in the [Patent Owner’s Preliminary Response] did not capture
the reason that a ‘range’ in the context of the claims of the ’898 Patent
cannot be satisfied by aggregating separate, discrete sets of ‘permissible
values.’” PO Resp. 18. Patent Owner also contends “that the plain and
ordinary meaning of the claim language applies and that a POSITA would
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understand the meaning of the phrase ‘a chroma QP range from 0 to 51
equal to a luma QP range’ in the context of the challenged claims.” Id. at
21. Patent Owner explains that “a disjoint ‘range’ cannot satisfy the claim
language because the claims apply at the ‘picture level.’” Id. at 18. More
particularly, Patent Owner argues
Because there is never a chroma QP in H.264 that has a
lower bound of 0 and an upper bound of 51 at any single point in
the decoding process or in any single picture, there is (1) no
chroma quantization parameter with a range of 0–51.
Additionally, because chroma QP always saturates at a reduced
range compared to luma QP in H.264, there is (2) never a chroma
QP that has a range equal to a luma QP range. Finally, because
Petitioner relies on aggregated sets of “permissible values” for
the chroma QP range in the Petition, there cannot be a chroma
QP with a range of 0–51 that can be (3) used to inverse quantize
quantization data. To inverse quantize quantization data, such as
a coded block, it is necessary to determine (set) a chroma QP that
has a minimum and maximum permissible value at the point of
determining/setting the chroma QP.
Id. at 19 (citing Ex. 2009 ¶ 98).
We preliminarily construed “a chroma QP range from 0 to 51 equal to
luma QP range” to mean that a chroma QP can take on values between 0 and
51 and a luma QP can take on values between 0 and 51. Inst. Dec. 8. We
maintain that construction for the following reasons. In the Institution
Decision, we determined that “[n]either claim 1 nor claim 5 requires
calculating or setting a full range of values, 0 to 51, for a chroma QP” and
“neither claim 1 nor claim 5 requires that the values 0 to 51 in the chroma
QP range be obtainable under a single set of conditions.” Id. at 7. Patent
Owner’s arguments do not persuade us to deviate from our preliminary
conclusion. We now conclude that, contrary to Patent Owner’s arguments,
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neither claim 1 nor claim 5 is limited to setting a chroma QP or inverse
quantizing at “a single point,” at a “picture level,” or within a “single
picture.” See PO Resp. 18–19.
None of Patent Owner’s arguments point to language in the
Specification of the ’898 patent that specifically defines the claimed “range,”
or any other portion of claim 1 or 5, as requiring a full complement of
contiguous integer values starting at 0 and ending at 51, or as limited to
being obtained under a single set of conditions. Patent Owner’s arguments
likewise do not point us to any extrinsic or intrinsic evidence that supports
the requirement that setting a chroma QP or inverse quantizing occurs at a
single point, at a picture level, or within a single picture. See generally PO
Resp. Patent Owner’s argument is, in effect, that if we do not construe the
claims as it urges, the invention of the ’898 patent will not be captured.
Although we interpret the claims in light of the specification, we do not
import limitations from the specification into the claims to cover the
invention or to make it operable.
As Petitioner argued before institution (see Prelim. Reply 2–3), “the
’898 patent supports the converse proposition––namely, that obtaining all of
the values, 0 to 51, in the chroma QP range requires differing sets of
conditions.” In its post-institution Reply, Petitioner supports this argument
with the diagram reproduced below, which depicts the range of integer
values for the chroma quantization parameter that is obtainable for each
distinct value of picture level chroma QP offset. Pet. Reply 3 (citing Ex.
1047 ¶ 12); see Ex. 1047 ¶ 13.
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Diagram from Petitioner’s Reply and Dr.
Havlicek’s Second Declaration depicting the range
of chroma quantization parameters that can be
obtained for each value of picture level chroma QP
offset. Pet. Reply 3.
In Petitioner’s diagram, the orange bars represent contiguous ranges
of integer values for chroma quantization parameters, either QPCb or QPCr.
Id. The orange bars differ for each value of picture level chroma QP offset
and are “clipped” in the gray portions of the diagram. Id. According to
Petitioner, “the red lines show the clipping in equations (1) [𝑄𝑃𝐶𝑏 =
𝐶𝑙𝑖𝑝 (0, 51, 𝑄𝑃𝑌 + Cb_QP_offset)] and (2) [𝑄𝑃𝐶𝑟 = 𝐶𝑙𝑖𝑝 (0, 51, 𝑄𝑃𝑌 +
Cr_QP_offset)] of the ’898 patent.” Id.; see Ex. 1001, 5:8–10 (Eqns. 1 and
2). Clipped values in the gray portions of the diagram are not part of the
obtainable ranges, and therefore not representative of values that may be
taken by the chroma quantization parameters for that particular value of
picture level chroma QP offset.
As can be seen from Petitioner’s diagram, only one value for picture
level chroma QP offset, 0, produces a contiguous range of integer values
between 0 and 51 for the chroma quantization parameter. Pet. Reply 3.
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Patent Owner argues that, contrary to Petitioner’s argument, “the ’898
Patent does not ‘claim[] embodiments in which a non-zero offset is added to
QPY to obtain the chroma QP.’” Sur-Reply 12 (quoting Pet. Reply 4).
Patent Owner contends that “[e]ven if Petitioner is correct that Patent
Owner’s claim construction would require an offset of zero to achieve the
range specified in the claim (0–51), such a zero offset is still included in the
embodiments disclosed in the specification and does not offend Vitronics.”
Id. at 13 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582–
83 (Fed. Cir. 1996)). We understand Patent Owner to take the position, for
the first time in its post-institution Sur-Reply, that a contiguous “chroma QP
range from 0 to 51” can be achieved if the claimed picture level chroma QP
offset is set to zero. See Sur-Reply 13. Patent Owner argues that, “[g]iven
the other requirements in the claim, the offset that satisfies the claim
language happens to be 0,” and “[t]here is nothing improper about excluding
other disclosed but unclaimed embodiments.” Id.
None of Patent Owner’s arguments persuade us that the claim
language requires limiting the claimed “picture level chroma qp offset” to
zero. Accordingly, we are not persuaded to exclude embodiments disclosed
in the ’898 patent in which “picture level chroma qp offset” takes on non-
zero values. Stated differently, we conclude that the claims also encompass
a “picture level chroma qp offset” that is non-zero. As Petitioner’s diagram
shows, when the “picture level chroma qp offset” is non-zero, a contiguous
“chroma qp range from 0 to 51” cannot be obtained, and as such, Patent
Owner’s arguments urging us to adopt its construction are neither consistent
with nor supported by the Specification of the ’898 patent. For these
reasons, we maintain our conclusion that the above-quoted claim limitation
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does not require that each value in the chroma QP range be obtainable using
a single or common set of conditions, nor does it require calculating each
value in the chroma QP range. Our preliminary construction, which we
maintain here, is consistent with the Specification, which discloses that,
“[t]he quantization parameters (QP) for Chroma are extended up to and more
preferably to the same range as Luma QP (e.g., 0 to 51).” Ex. 1001 at code
(57) (emphasis added).
C. Level of Ordinary Skill in Art
We review the grounds of unpatentability in view of the
understanding of a person of ordinary skill in the art at the time of the
invention. Graham, 383 U.S. at 17. Petitioner contends that the ordinarily
skilled artisan would have had at least
[A] bachelor’s degree in electrical engineering or a closely
related scientific field, such as physics, computer science, or
computer engineering, or similar advanced post-graduate
education in this area, with two years of experience with video
processing systems. Ex. 1002, ¶ 28. A person with less
education but more relevant practical experience, depending on
the nature of that experience and degree of exposure to video
compression algorithms, could also qualify as a person of
ordinary skill in the field of the ’898 patent . . . A POSA would
have been familiar with ubiquitous video coding standards, such
as those developed by the Motion Pictures Expert Group
(“MPEG”) and those adopted by the International
Telecommunications Union (“ITU”). Ex. 1002, ¶ 29.
Pet. 17–18. Patent Owner does not propose a definition for the level of
ordinary skill in the art. See generally PO. Resp.
We determine that the level of ordinary skill proposed by Petitioner is
consistent with the ’898 patent and the asserted prior art, and we adopt that
definition. We note, however, the conclusions and findings rendered in this
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decision do not turn on selecting the particular level of ordinary skill in the
art that Petitioner proposes.
D. Obviousness over H.264
Petitioner contends that claims 1, 3–5, 7, and 8 are unpatentable under
35 U.S.C. § 103 as obvious over H.264. Pet. 14–59. We are persuaded that
the evidence, including Dr. Havlicek’s testimony, supports Petitioner’s
arguments. Petitioner thus establishes that these claims are unpatentable as
obvious over H.264 by a preponderance of the evidence.
1. Overview of H.264 (Ex. 1004)
H.264 is a compression standard for high-definition digital video that
is also known as MPEG-4 Part 10 or Advanced Video Coding (MPEG-4
AVC). H.264 discloses a derivation process for chroma quantization
parameters. Ex. 1004, 198.6 “The value of QPC for a chroma component is
determined from the current value of QPY and the value of
chroma_qp_index_offset (for Cb) or second_chroma_qp_index_offset (for
Cr).” Id.
2. H.264 Printed Publication Status
Petitioner contends that H.264 “was publicly accessible no later than
May 29, 2008,” and supports this contention with the Declaration of Dr.
Wenger. Pet. 19 (citing Ex. 1015 ¶¶ 20, 24). Petitioner further contends that
Dr. Wenger’s testimony shows that “the November 2007 version of H.264
was approved in November 2007 and made widely available shortly
thereafter,” and that the ordinarily skilled artisan “would have known that
approved H.264 editions were posted on the ITU-T website

6 With respect to Exhibit 1004, we refer to page numbers added by Petitioner
on the bottom right side, not the internal document page numbers.
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(https://www.itu.int/rec/T-REC-H.264/en) without restriction on access and
were thus publicly available as of the date of posting.” Id. (citing Ex. 1015
¶¶ 16–19, 23, 24; Ex. 1016). Petitioner contends that “[t]he dates of posting
shown on the ITU-T website are reliable and consistent with the experience
of a member of the working group responsible for drafting the standard,”
and that “[t]he ITU-T website would have been well-known to a POSA, and
includes a listing of ITU-T standards that can be easily accessed using only
the standard number, without any restriction on access.” Id. at 20 (citing Ex.
1015 ¶¶ 22, 24; Ex. 1017).
Patent Owner does not contest Petitioner’s assertion regarding the
printed publication status of H.264. See generally PO. Resp. We are
persuaded that H.264 was publicly accessible, that the ordinarily skilled
artisan would have been aware of how to access it, and, thus, that it
constitutes a prior art printed publication.
3. Independent Claim 1
[Preamble] “A decoding apparatus, comprising:
circuitry configured to . . . ”
Claim 1 recites “[a] decoding apparatus, comprising: circuitry
configured to” perform the functions recited in claim 1. Petitioner contends
H.264 defines a “decoder” as “[a]n embodiment of a decoding
process,” and a “decoding process” as a process that is specified
in the standard that “reads a bitstream and derives decoded
pictures from it.” . . . A POSA would have understood from these
disclosures, as well as the techniques set forth in H.264 more
generally, that a decoder was an apparatus, and thus
contemplated a decoder as the equipment for performing the
decoding processes defined by H.264.
Pet. 34 (citing Ex. 1004, 29). Petitioner further contends that “an H-264-
compliant decoder implementing H.264 needs to be able to decode any
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permissible bit stream received according to the syntax defined by the
standard,” and that, because Petitioner shows that the parameters as claimed
are representative of parameters and permissible values for these parameters
disclosed by H.264, an H.264-compliant decoder must have circuitry
configured to decode the permissible values in H.264-compliant bit streams.
Id. at 49.
Petitioner also contends a “POSA would have been motivated to
implement H.264 in a decoder and its attendant circuitry either based on the
teachings of H.264 alone or in view of Kim.” Id. at 47 (citing Ex. 1002 ¶¶
97, 135, 136). We discuss the combination over H.264 and Kim below.
Petitioner argues that “[a] POSA would have . . . plainly expected to succeed
in creating a circuit configured to implement the claimed functionality
because it is required by the standard.” Id. at 49 (citing Ex. 1002 ¶ 136;
ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1362 (Fed. Cir. 2018)).
Having reviewed Petitioner’s arguments and the cited evidence of
record, we are persuaded that the ordinarily skilled artisan would have
known that H.264 would be implemented in a decoder apparatus with the
appropriate circuitry and, thus, that H.264 teaches the “circuitry” recited in
the preamble.7
[element A] “set[ting] a first chroma quantization
parameter (QP) included in a chroma QP range from 0
to 51 equal to a luma QP range”
Claim 1 recites “set[ting] a first chroma quantization parameter (QP)
included in a chroma QP range from 0 to 51 equal to a luma QP range.”

7 We need not determine whether the preamble is limiting because Petitioner
has shown that the recitation in the preamble is satisfied by the prior art.
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Petitioner contends H.264’s teaching of QP’C corresponds to the claimed
“first chroma quantization parameter (QP)”:
𝑄𝑃′𝐶 = 𝑄𝑃𝐶 + 𝑄𝑝𝐵𝑑𝑂𝑓𝑓𝑠𝑒𝑡𝐶.
Pet. 36 (citing Ex. 1004, 198 (Eqn. 8-318)). Petitioner asserts that “[t]he
variable QPC that is a part of QP’C is determined ‘for each chroma
component Cb and Cr,’” and that “QpBdOffsetC—another component of
QP’C—is defined in H.264 as the ‘chroma quantisation parameter range
offset.’” Id. (citing Ex. 1004, 90, 198; Ex. 1002 ¶¶ 101, 102). According to
Petitioner, H.264 discloses that “[t]he value of QPC for each chroma
component is determined as specified in Table 8-15 based on the index
denoted as qPI.” Id. at 37 (quoting Ex. 1004, 198). Table 8-15 of H.264 is
reproduced below.

Table 8-15 illustrates values QPC can take that are
determined as a function qPI. Ex. 1004, 198.
Petitioner explains that qPI values, in turn, are calculated using the following
equation:
𝑞𝑃𝐼 = 𝐶𝑙𝑖𝑝3(−𝑄𝑝𝐵𝑑𝑂𝑓𝑓𝑠𝑒𝑡𝐶 , 51, 𝑄𝑃𝑌 + 𝑞𝑃𝑂𝑓𝑓𝑠𝑒𝑡).
Id. at 38 (citing Ex. 1004, 198 (Eqn. 8-317)). According to Petitioner, Table
8-15, reproduced above, illustrates that “when qPI is at its maximum of 51,
QPC has a value of 39,” and thus, “the range of permissible QPC values is
from –QpBdOffsetC to 39.” Id. (citing Ex. 1004, 198 (Table 8-15); Ex. 1002
¶¶ 105, 106).
Based on determining the range of permissible QPC values, Petitioner
derives a range of permissible QP’C values, which Petitioner contends
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teaches “set[ting] a first chroma quantization parameter,” as claimed. Id.
Petitioner’s annotations to Equation 8-318 of H.264, reproduced below,
illustrate how a lower bound and upper bound for the range are derived.

Equation 8-318 of H.264 with Petitioner’s
annotations illustrates a range for QPC, and
consequently, QP’C.
With respect to QpBdOffsetC, Petitioner contends that it “is defined in H.264
as the ‘chroma quantisation parameter range offset,’ and it is specified as”
follows:
𝑄𝑝𝐵𝑑𝑜𝑓𝑓𝑠𝑒𝑡𝐶 = 6 ∗ (𝑏𝑖𝑡𝑑𝑒𝑝𝑡ℎ𝑐ℎ𝑟𝑜𝑚𝑎𝑚𝑖𝑛𝑢𝑠8
+ 𝑟𝑒𝑠𝑖𝑑𝑢𝑎𝑙𝑐𝑜𝑙𝑜𝑢𝑟𝑡𝑟𝑎𝑛𝑠𝑓𝑜𝑟𝑚𝑓𝑙𝑎𝑔
).
Id. at 39 (citing Ex. 1004, 90 (Eqn. 7-5)). According to H.264, the value of
bit_depth_chroma_minus8 “shall be in the range of 0 to 6, inclusive” and
according to Petitioner “POSAs were aware that the residual_colour_
transform_flag can assume a value of zero.” Id. (citing-in-part Ex. 1002
¶¶ 101, 107, n.7; Ex. 1004, 90). Petitioner explains that
When the residual transformation is not performed (and thus
residual_colour_transform_flag = 0), QpBdOffsetC is any one of
0, 6, 12, 18, 24, 30, or 36. Ex. 1002, ¶¶ 107–108. The H.264
standard thus taught an implementation in which the value of
QpBdOffsetC is 12. Ex. 1002, ¶¶ 107, 108.
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When the QpBdOffsetC is set to 12 (and recalling that the
maximum value of QPC is 39), the highest value for QP’C is 51
as shown in the equation below:
𝑄𝑃′𝐶 = 𝑄𝑃𝐶 + 𝑄𝑝𝐵𝑑𝑂𝑓𝑓𝑠𝑒𝑡𝐶 = 39 + 12 = 51.
Id. at 40 (Ex. 1004, 118 (Eqn. 7–36), 198). Based on the foregoing,
Petitioner contends that “H.264 teaches a ‘first chroma quantization
parameter’—i.e., QP’c—that is ‘included in a chroma QP range from 0 to
51’ as required by claim 1.” Id. (citing Ex. 1002 ¶¶ 109, 110, 129).
Using similar equations, Petitioner derives permissible values of QP’Y
in its range, which Petitioner contends corresponds to the claimed “luma QP
range.” See id. at 40–42. Based on these derivations, Petitioner contends
that H.264 discloses “a luma QP range (for QP’Y) of 0-51 that is equal to the
chroma QP range (for QP’C), which is also 0-51.” Id. at 42. Petitioner
contends that
Because a luma bit depth of 8 and a chroma bit depth of 10
represent standard-compliant bit depths . . . the decoder must
have circuity configured to decode such a stream . . .Nonetheless,
even if it were required to set the chroma and luma bit depths to
be 10 and 8, respectively, thus leading to both the QP’C and QP’Y
values being in the range of 0-51 to meet this claim, it would
have been obvious to a POSA to do so . . . The range of
permissible bit depths under H.264 for chroma and luma is
between 8 and 14 because BitDepthC and BitDepthY are defined
as 8 plus some number between 0 and 6 . . . This is a limited
number of possibilities . . . H.264 teaches at least one example in
which “different components, e.g., Y and Cb, need not have the
same bit depth,” . . . A POSA would have had good reason to
pursue these known options among the finite number of
predictable solutions[.]
Id. at 42–44 (internal citations omitted).
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a) Patent Owner’s Contentions
Patent Owner presents several arguments disputing Petitioner’s
showing for this claim limitation. PO Resp. 53. First, that Petitioner’s
challenge improperly relies on “an intermediate value [QP’C] in between the
actual chroma quantization parameter [QPC] . . . and the quantization step in
H.264.” Id. Second, that Petitioner’s challenge improperly “calculates QP’C
using a chroma bit depth of 10 (while calculating a luma QP range using a
bit depth of 8, despite Petitioner’s expert’s acknowledgement that he is
unaware of any coding device in the world that works that way).” Id. Third,
that Petitioner’s challenge improperly “aggregates discrete sets of
‘permissible values’ for the alleged chroma quantization parameter to obtain
a lower bound (which would appear in one picture using one offset) and an
upper bound (which would appear in a different picture using a different
offset), despite the absence of any support for this in the ’898 Patent
specification.” Id. Fourth, that Petitioner’s challenge “ignores the fact that
the approach taken in the Petition does not even solve the extended-range
problem the ’898 Patent addresses.” Id.
b) Petitioner’s Responsive Contentions
With respect to Patent Owner’s first contention, that Petitioner
improperly relies on QP’C instead of QPC as teaching the claimed “first
chroma quantization parameter,” Petitioner responds that objective evidence
such as Kim discloses that a quantization parameter of a chrominance
component is calculated as follows: 𝑄𝑃’𝐶 = 𝑄𝑃𝐶 + 𝑄𝑝𝐵𝑑𝑂𝑓𝑓𝑠𝑒𝑡𝑐. Pet.
Reply 8 (citing Ex. 1006 ¶ 14). Petitioner further notes that Kim’s equation
is “the same equation that defines QP’C in H.264” and “H.264 itself refers to
QP’Cr and QP’Cb as ‘chroma quantisation parameters.’” Id. (citing Ex. 1004,
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198 (Eqn. 8-318), 472 (section G.8.5.1)). According to Petitioner, “this
evidence shows that those in the field described parameters as chroma
quantization parameters even if they are expressed with the variables QP’C,
QP’Cr, QP’Cb, Qp’Cb, or Qp’Cr.” Id. at 8–9.
c) Discussion
We are persuaded that the cited portions of H.264 and Kim each
individually support Petitioner’s position that not only QPC, but also QP’C,
would have been understood by the ordinarily skilled artisan to disclose a
“first chroma quantization parameter” as recited in independent claim 1.
Patent Owner’s argument that, by “adding QpBdOffsetC to QPC, QP’C can
only shift the QP range of H.264 (0–39, as in Table 8-15) up or down; it
cannot ‘extend’ it to a wider range” further supports Petitioner’s position
that QP’C is a chroma quantization parameter. See PO Resp. 37 (citing Ex.
2009 ¶ 125; Ex. 1004, 198 (Eqn. 8-318)) (emphasis added). This is because
adding QpBdOffsetC to QPC merely shifts the chroma quantization
parameter value to a different value represented by QP’C––it does not
change what that value represents. Thus, we find that Patent Owner’s
characterization of QP’C as an intermediate value that is “derived from and
related to QPC,” but “not itself the chroma quantization parameter described
in the ’898 Patent and defined in H.264” is insufficiently supported. PO
Resp. 37. Rather, we find persuasive Petitioner’s argument that, “. . . QPC is
used to calculate QP’C, the value of which is used in the scaling operations,”
and thus, “. . . QPC is even further removed from the inverse quantization
step than QP’C,” which undermines Patent Owner’s distinction of QP’C as
merely an intermediate value. Pet. Reply 9.
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With respect to Patent Owner’s second contention, that a chroma bit
depth used to calculate the claimed “chroma QP range” is different from the
luma bit depth used to calculate “luma QP range,” Petitioner responds that
H.264 expressly discloses a finite number of options––values between 8 and
14 for each of chroma bit depth and luma bit depth––making the selection of
a chroma bit depth of 10 and a luma bit depth of 8 predictable. See Tr. 16:9–
13. According to Petitioner, a decoder that implements the H.264 standard
must be able to handle the bit depth values enumerated in the H.264
standard. See id. at 16:13–15; see Pet. Reply 13 (citing Ex. 1001, claims 1,
5). Petitioner further takes the position that the chroma bit depth need not
have the same value as the luma bit depth. Dr. Havlicek supports this
position with his testimony that the ordinarily skilled artisan would have
known
[T]hat the H.264 standard specifically contemplates digital video
wherein the luma and chroma components have different bit
depths for at least two reasons: first, the standard defines separate
sequence-level parameters bit_depth_luma_minus8 and
bit_depth_chroma_minus8 to specify the bit depths of the luma
and chroma components individually; second, the standard
teaches at least one example in which “different components,
e.g., Y and Cb, need not have the same bit depth.”
[A] POSA would have found that there are only a limited number
of potential bit depths supported by H.264. In fact, as I have
outlined above in connection with my summary of relevant
aspects of H.264, the permissible bit depths for both luma and
chroma range from 8 to 14 in H.264. Moreover, as I have also
explained above, H.264 specifically contemplates cases where
the luma and chroma bit depths are different. Setting the chroma
bit depth to be 10 and the luma bit depth to be 8, thus leading to
the QP’C value and the QP’Y value both being in the range of 0-
51, is expressly contemplated by the standard’s limited
permissible configurations.
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Ex. 1002 ¶¶ 130, 137 (citing Ex. 1004, 62, 89, 90, 96).
We are not persuaded by Patent Owner’s argument that Petitioner’s
selection of particular values for bit depth, in order to obtain a chroma QP
range of 0–51 as claimed, constitutes hindsight. We credit the testimony of
Dr. Havlicek, which supports the finding that an H.264-compliant decoding
apparatus implemented in software and the attendant circuitry as set forth in
Petitioner’s challenge would have been understood to be capable of handling
permissible values specifically contemplated by and disclosed in the H.264
standard, as well as handling various combinations of these values (e.g., a
chroma bit depth of 10 and a luma bit depth of 8). See id. Irrespective of
whether it would have been unlikely to come across a bit stream having a
chroma bit depth of 10 and a luma bit depth of 8, as Patent Owner contends
(see PO Resp. n.3), Petitioner shows sufficiently that an H.264-compliant
decoding apparatus and decoding method would have been able to handle
these particular selections for bit depth.
With respect to Patent Owner’s third contention, that Petitioner’s
challenge obtains the claimed “chroma QP range from 0 to 51” with discrete
sets that use different picture offsets, Patent Owner specifically takes issue
with Petitioner’s proposed range of chroma quantization parameters being
“ . . . defined by multiple chroma quantization parameters and multiple
picture level offsets—in multiple pictures.” PO Resp. 40. According to
Patent Owner, Dr. Richardson supports its interpretation of the claims for the
following reasons: first, the recitation of a “picture level chroma QP offset”
indicates that the claims refer to a single picture, second, the recitation of
“setting a first chroma quantization parameter that is within a range of 0–
51,” means “the parameter (which is a single, or ‘first’ parameter) must have
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a range of 0–51 (i.e., must be capable of taking any value between 0 and 51)
when it is set (i.e., at a particular point in time in a single picture),” and
third, “the claims recite dequantizing data using the chroma quantization
parameter QP” where “data must be coded transform coefficient data within
one or more blocks of a picture.” PO Resp. 40–41 (citing Ex. 2009 ¶¶ 129–
30) (emphases added).
Dr. Richardson’s testimony does not persuade us to adopt Patent
Owner’s claim construction because: (1) the mere use of the term “a picture
level QP offset” in the claims does not limit the claims to a single picture or
a single picture level offset in a single picture; (2) nothing in the claims
requires the claimed “first chroma quantization parameter” to be capable of
assuming every value in the range of 0 to 51 when it is set or at a particular
point in time in a single picture, particularly because the claim does not
require setting the chroma quantization parameter range; and (3) even if data
that is inverse quantized using the claimed “first chroma quantization
parameter” comes from one or more blocks of a single picture, that still
would not limit how the chroma quantization parameter range of 0 to 51 is
calculated or determined, nor would it require that the single, first chroma
quantization parameter be able to assume every value from 0 to 51 at the
time of inverse quantization (see Pet. Reply 6).
As we preliminarily concluded in our Institution Decision, and as we
conclude in this decision (supra § III.B), claim 1 does not require calculating
the entire range, 0 to 51, of chroma quantization parameters under a
common set of conditions (i.e., using the same parameter values of
QpBdOffsetC and qPOffset for calculating each value in the range). As we
explained in our Institution Decision, “Patent Owner’s arguments, in effect,
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propose to construe the claims to exclude a ‘piecewise’ function for
determining a range of chroma quantization parameters.” Inst. Dec. 16. But
neither the claims nor the specification guides us to so limit the scope of
independent claim 1.
With respect to Patent Owner’s fourth contention, that Petitioner’s
challenge “does not even solve the extended-range problem the ’898 Patent
addresses,” Petitioner’s evidence need only be tied to the scope of the
claimed invention, which may be broader than the objectives or approaches
disclosed in the ’898 patent. In this proceeding, the claims are not so limited
as to achieving the purpose, objective, or approach of the ’898 patent and, as
such, we are not persuaded by Patent Owner’s fourth contention.
Having reviewed the arguments and cited evidence of record, we are
persuaded that H.264 teaches this claim limitation.
[Element B] “based on a parameter including a picture
level chroma QP offset added to a luma QP”
Claim 1 further recites “set[ing] a first chroma quantization parameter
. . . based on a parameter including a picture level chroma QP offset added
to a luma QP.” Reproduced below is Equation 8-317 from H.264, which
calculates qPI, as annotated by Petitioner.

Petitioner’s annotated version of Equation 8-317
that calculates qPI.
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Petitioner contends that “[t]he index parameter (qPI) includes a picture level
chroma QP offset (qPoffset) and a luma QP (QPY),” and that “qPoffset
(which is different than QpBdOffsetC because it is not dependent on the bit
depth) is specified as one of two values, depending on whether the chroma
component under consideration is a Cb or a Cr component.” Pet. 45–46
(citing Ex. 1004, 198 (Eqns. 8-315, 8-316)). Petitioner further contends that
qPoffset is a “picture level chroma QP offset” because (1)
chroma_qp_index_offset and second_chroma_qp_offset are
both defined to be part of the picture parameter set (PPS) in
H.264, (2) it corresponds to the chroma components (e.g., Cr or
Cb), . . . and (3) the qPoffset takes the same “picture level” form
as described in the ’898 patent itself, which teaches adding luma
QP, “then picture level chroma QP offsets” (for Cb and Cr), and
then slice-level chroma QP offsets, Ex. 1001, 5:24-37.
Id. at 46 (see Ex. 1002, ¶ 115; Ex. 1004, 64, 198). Petitioner explains that
QP’c is based on QPc, and QPc is based on qPI (Table 8-15).
QP’c is “based on” qPI because to calculate QP’C, you must first
sum QPY and qPoffset to get qPI, thus QP’C is based on this
sum. And, qPI is a “parameter” that includes “a picture level
chroma QP offset added to a luma QP,” as required by claim 1.
Id. (citing Ex. 1002, ¶ 131; Ex. 1004, 198 (Eqn. 8-318)).
c) Patent Owner’s Contentions
Patent Owner disputes Petitioner’s challenge as pointing to “different
parameters to define the two references to ‘luma QP’ in the claims.” PO
Resp. 53. Specifically, Patent Owner takes issue with Petitioner’s reliance
on “QP’Y when defining the ‘luma QP range,’” in light of Petitioner’s
reliance “on QPY when arguing that H.264 discloses ‘a picture level chroma
QP offset added to a luma QP.’” Id. at 50. According to Patent Owner,
“[t]he problem with Petitioner’s reliance on QP’Y when calculating the
alleged ‘range’ of luma QP is that a picture level chroma QP offset is never
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added to QP’Y in H.264.” Id. at 51. Patent Owner argues that, instead,
“Petitioner argues that H.264 discloses ‘a parameter including a picture level
chroma QP offset added to a luma QP,’ it relies on QPY (not QP’Y) as the
‘luma QP.’” Id. (citing Pet. 31).
d) Petitioner’s Responsive Contention
According to Petitioner, “[b]ecause both QP’Y and QPY can range
from 0 to 51 in the example provided in the Petition, even if the claim
required ‘a luma QP’ to be in ‘a luma QP range,’ the value for QPY is within
the range of values that QP’Y can take on and thus meets the claim.” Pet.
Reply 15.
d) Discussion
Petitioner has the better position. Much like the relationship between
QP’C and QPC discussed above with respect to the preceding limitation,
Element A, QP’Y and QPY are related by an offset: 𝑄𝑃’Y = 𝑄𝑃Y +
𝑄𝑝𝐵𝑑𝑂𝑓𝑓𝑠𝑒𝑡Y. Pet. 29 (citing Ex. 1004, 118 (Eq. 7-36)). We similarly find
that adding QpBdOffsetY to QPY merely shifts the luma quantization
parameter value to a different value represented by QP’Y––it does not
change what that value represents. That QPY takes on a value within the
range of values QP’Y , as Petitioner contends, is sufficient to meet the claim
limitation. Based on the entirety of the record, we are persuaded that
Petitioner’s identification of permissible values of QP’Y as teaching the
claimed “luma QP range” is consistent with Petitioner’s identification of
QPY as teaching the claimed “luma QP.”
Having reviewed the arguments and cited evidence of record, we are
persuaded that H.264 teaches this claim limitation.
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[Element C] “inverse quantize quantization data that is
decoded from a bit stream, based on the first chroma QP.”
Claim 1 recites “inverse quantiz[ing] quantization data that is decoded
from a bit stream, based on the first chroma QP.” Petitioner explains that,
“[i]n the context of H.264, the process of inverse quantization is known as
‘scaling.’” Pet. 46. Petitioner further explains that “[f]or the purposes of the
disclosed inverse quantization process, the variable ‘qP’ is ‘set equal to . . .
QP’C.’” Id. at 47 (citing Ex. 1004, 201). According to Petitioner,
[T]he mathematics of inverse quantization of quantization data
decoded from a bitstream is described in section 8.5.10.2, where
the variable qP (i.e., the first chroma QP’C) is an input into that
process and that value is used to calculate the scaled—or inverse
quantized values—using different equations depending on the
ChromaArrayType.
Id. (citing Ex. 1004, 202 (Eqns. 8-332 to -335); Ex. 1002 ¶ 133).
e) Patent Owner’s Contention
Patent Owner argues that Petitioner’s showing “ignores the fact that
the extended-range chroma QP is used to inverse quantize quantization
data.” PO Resp. 53. In its Sur-Reply, Patent Owner acknowledges that
“only a single value is used in the [claimed inverse quantization] process,”
but characterizes Petitioner as “agree[ing] that the antecedent basis for that
value is the chroma QP that was ‘set’ at the beginning of the claim, within a
range of 0–51.” Sur-Reply 14.
f) Petitioner’s Responsive Contention
Petitioner responds that “[s]ince only one value is used for inverse
quantization nothing in the claim language requires that single value be able
to assume every integer value from 0 to 51 at the time of inverse
quantization.” Pet. Reply 6.
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f) Discussion
We are persuaded by Petitioner’s argument and further determine that
Patent Owner’s arguments implicitly construe claim 1 to require setting
every value in the chroma QP range from 0 to 51, not setting a first chroma
QP to have a value that is included in a chroma QP range, as claimed. This
implicit construction is not supported by the intrinsic or extrinsic record.
Having reviewed Petitioner’s arguments and the cited evidence of
record, we are persuaded that H.264 teaches this claim limitation and that
Petitioner establishes that claim 1 is unpatentable as obvious over H.264 by
a preponderance of the evidence.8
4. Independent Claim 5
Petitioner relies on the same analysis for its challenges to claims 1 and
5, which have similar limitations. Pet. 50. Patent Owner addresses both
claims 1 and 5 together. See PO Resp. 32–54. For reasons substantially
similar to those set forth above in Section III.D.3, we are persuaded that
Petitioner establishes that claim 5 is unpatentable as obvious in view of
H.264 by a preponderance of the evidence.
5. Dependent Claims 3, 4, 7, and 8
We have reviewed Petitioner’s arguments and evidence concerning
claims 3, 4, 7, and 8 and are persuaded that Petitioner establishes that these
claims are unpatentable as obvious in view of the H.264 standard by a
preponderance of the evidence for the reasons that follow. See Pet. 50–56.
Patent Owner does not present separate arguments for claims 3, 4, 7, and 8.

8 Neither party presents evidence of objective considerations of
nonobviousness at this stage of the proceeding.

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See PO Resp. 17 (“Velos addresses only independent Claims 1 and 5 in this
Response, as the dependent claims are necessarily valid in light of
Petitioner’s failure to prove Claims 1 and 5 obvious.”) (citing In re Fine, 837
F.2d 1071, 1076 (Fed. Cir. 1988).
Claim 3 recites, inter alia, “wherein the circuitry is further configured
to: set a second chroma QP for a first chroma component based on a first
value of the parameter; and set a third chroma QP for a second chroma
component based on a second value of the parameter.” Claim 7 recites, inter
alia, “setting a second chroma QP for a first chroma component based on a
first value of the parameter; and setting a third chroma QP for a second
chroma component based on a value of the parameter.” We interpret “a
value of the parameter” in the latter clause of claim 7 as distinct from “a first
value of the parameter” in the former clause of claim 7 as is consistent with
claim 3.
With respect to these claims, Petitioner contends that “[i]n H.264, the
two chroma components in H.264 are Cb and Cr,” either of which
corresponds to the first chroma component recited in claims 3 and 7. Pet. 52
(citing Ex. 1002 ¶¶ 140, 156). According to Petitioner, “[a] POSA would
have understood that when decoding using H.264, the chroma QP values
may be calculated for each macroblock.” Id. at 51 (citing Ex. 1002 ¶ 117
(citing Ex. 1004, 0118)). More particularly, Petitioner contends that
“chroma quantization parameter QP’C may be set to different values for
differentmacroblocks within a single picture because QP’C depends on QPY
through the parameter qPI and can vary per macroblock.” Id. at 52 (citing
Ex. 1002 ¶ 117); see also id. at 51 (citing Ex. 1004, 118 (Eqn. 7–35)); id. at
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52–54 (citing Ex. 1004, 198 (Eqns. 8–315, 3–316, 8–317, 8–318, Table 8–
15)). Petitioner contends
Therefore, the claimed “a first value of the parameter” is taught
or at least rendered obvious by H.264 in that H.264 teaches
calculating a first value of qPI using the qPoffset for Cb. And the
claimed “second chroma QP” is taught or at least rendered
obvious by H.264 when it teaches calculating QP’C for Cb using
this first value of qPI for a particular macroblock, which is
different from the macroblock for which the “first chroma
quantization parameter” (QP) was set as discussed above.
* * * *
[T]he claimed “a second value of the parameter” is taught or at
least rendered obvious by H.264 in that H.264 teaches
calculating a first value of qPI using the qPoffset for Cr. And the
claimed “third chroma QP” is taught or at least rendered obvious
by H.264 when it teaches calculating QP’C for Cr using this first
value of qPI for a particular macroblock, which is different from
the macroblock for which the “first chroma quantization
parameter (QP)[”] was set as discussed above.
Id. at 53–55 (citing Ex. 1002 ¶¶ 117, 143, 156). We have reviewed the cited
portions of H.264 and find that they sufficiently support Petitioner’s
argument that QP’C is calculated for first and second chroma components,
Cb and Cr. We further find sufficiently supported Petitioner’s argument that
the ordinarily skilled artisan would have understood that QP’C varies based
on the particular macroblock for which it is calculated because QP’C is
calculated based on qPI, which is calculated based on QPY, which is in turn
calculated based on QPY,PREV, the luma quantization parameter “. . . of the
previous macroblock in decoding order in the current slice.” Ex. 1004, 118
(Eqn 7–35). Accordingly, we conclude that Petitioner establishes that
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claims 3 and 7 are obvious in view H.264, by a preponderance of the
evidence.
Claim 4 recites, inter alia, “wherein the circuitry is further configured
to decode the bit stream to generate the quantization data.” Claim 8 recites,
inter alia, “decoding the bit stream to generate the quantization data.” With
respect to these claims, Petitioner contends
In H.264, a “bistream” refers to either a “NAL unit
stream” or a “byte stream,” both of which are also defined by
H.264. . . . A “NAL unit stream” is a “sequence of NAL units.”.
. . “NAL units” indicate the type of data to follow and bytes of
data. . . . The process of decoding NAL units is described in
section 8.1 of H.264. . . . These processes extract “the RBSP”—
or the “raw byte sequence payload”—from NAL units. Id. The
raw bytes associated with encoded picture data can reflect
quantized data associated with the luma or chroma components
of the image (depending on the encoding mode and whether all
components are present in the bitstream).. . . Therefore, the
decoding processes described in section 8 of the H.264 standard
teach decoding the bit stream to generate the quantization data,”
which is simply the data upon which H.264 will perform a
scaling (inverse quantization) operation.
Pet. 56 (citing Ex. 1002 ¶¶ 145–146, 157; Ex. 1004, 27, 31, 125.). We have
reviewed the cited portions of H.264, Dr. Havlicek’s testimony, and
Petitioner’s arguments and conclude that Petitioner establishes that claims 4
and 8 are obvious in view H.264, by a preponderance of the evidence.
E. Obviousness over H.264 and Kim
Petitioner contends that claims 1, 3–5, 7, and 8 are unpatentable under
35 U.S.C. § 103 as obvious over H.264 and Kim. Id. at 34–56. We are
persuaded that the evidence, including Dr. Havlicek’s testimony, supports
Petitioner’s arguments. Petitioner thus establishes that these claims are
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unpatentable as obvious in view of the H.264 standard and Kim by a
preponderance of the evidence.
1. Overview of Kim (Ex. 1006)
Kim concerns “[a] method and an apparatus for transforming/inverse
transforming and quantizing/dequantizing a color image[.]” Ex. 1006 at
code (57). Kim further discloses calculating chrominance quantization
parameters. See, e.g., id. ¶ 14.
2. Independent Claim 1
Petitioner contends “Kim teaches ‘an apparatus for decoding a color
image,’ that includes a number of components such as an ‘entropy decoder’
a ‘dequantizer,’ and ‘a frequency inverse transformer.’” Pet. 35 (citing Ex.
1006 ¶¶ 22, 23, 25, 71–74, Fig. 15; Ex. 1002 ¶ 127). Petitioner also
contends that Kim “further teaches that the disclosed methods for decoding
color images can be implemented on computer-readable media designed to
be executed by a ‘computer system,’ which a POSA would have understood
to include ‘circuitry’ that is ‘configured’ to perform the decoding processes
described therein.” Id. (citing-in-part Ex. 1006 ¶ 90). Petitioner further
relies on Kim to explain how a “residual_colour_transform_flag is set to
zero, for example, when a residual transformation is not performed on the
chroma coefficients.” Id. at 39–40 (citing Ex. 1006 ¶¶ 14, 21).
Patent Owner does not present any substantive contentions with
respect to this ground, except that Kim does not cure the deficiencies of
H.264. See PO Resp. 54.
Paragraph 90 of Kim does not exist––we understand Petitioner’s
citation to this paragraph to be a typographical error––paragraph 79 of Kim,
however, discloses that its invention “can also be embodied as computer
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readable codes on a computer-readable storage medium,” which “is any data
storage device that can store data which can be thereafter read by a computer
system.” We are persuaded that paragraph 79 of Kim provides sufficient
support for Petitioner’s contention that the combination of H.264 and Kim
teaches or suggests “[a] decoding apparatus, comprising: circuitry
configured to” perform the functions recited in claim 1. As to the remainder
of the limitations recited in claim 1, Petitioner’s analysis is the same as set
forth above with respect to the challenge applying H.264 alone. See Pet. 34–
56. Our analysis, therefore, is substantially similar to the analysis set forth
above with respect to the challenge applying H.264 alone. See supra III.F.3.
Rationale for Combining H.264 and Kim
According to Petitioner, “[a] POSA would have been motivated to
implement H.264 in a decoder and its attendant circuitry either based on the
teachings of H.264 alone or in view of Kim.” Pet. 47 (citing Ex. 1002 ¶¶ 97,
135, 136) (emphasis added). In support of its rationale for combining H.264
and Kim, Petitioner argues that (1) Kim describes the same processes as
H.264 for quantizing and inverse quantizing color images, and moreover,
Kim’s quantization process uses the same equations as disclosed in H.264;
(2) “[b]ecause H.264 describes the processes to be implemented in a
standards-compliant decoder, a POSA would have been led to examine prior
art references that relate to such decoders to see aspects of hardware
implementations and structures of those decoders, such as those taught by
Kim.” Id. at 48 (citing-in-part Ex. 1002 ¶ 136).
Patent Owner does not present any substantive contentions with
respect to Petitioner’s rationale for combining or otherwise for this ground,
except that Kim does not cure the deficiencies of H.264. See PO Resp. 54.
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Patent 10,110,898 B2

34
We are persuaded that Petitioner’s stated rationale for combining
H.264 and Kim is supported by sufficient rational underpinning. We have
reviewed Petitioner’s arguments and evidence concerning claim 1 and we
are persuaded that Petitioner establishes that claim 1 is unpatentable obvious
in view of H.264 and Kim by a preponderance of the evidence.
3. Independent Claim 5
Petitioner relies on the same analysis for its challenges to claims 1 and
5. Pet. 50. For reasons substantially similar to those set forth above in
Section III.E.2, we are persuaded that Petitioner establishes that claim 5 is
unpatentable as obvious over the combination of H.264 and Kim by a
preponderance of the evidence.
4. Dependent Claims 3, 4, 7, and 8
As to dependent claims 3, 4, 7, and 8, Petitioner’s analysis is the same
as set forth above with respect to the challenge applying H.264 alone. See
Pet. 34–56. Patent Owner does not present separate arguments for claims 3,
4, 7, and 8. See PO Resp. 17. Our analysis, therefore, is substantially
similar to the analysis set forth above with respect to the challenge applying
H.264 alone. See supra III.D.5. We have reviewed Petitioner’s arguments
and evidence concerning claims 3, 4, 7, and 8 and are persuaded that
Petitioner establishes that these claims are unpatentable as obvious over the
combination of H.264 and Kim by a preponderance of the evidence. See
Pet. 50–56.
F. Real Party in Interest Arguments
Patent Owner argues that we should dismiss the Petition because it
does not name all real parties in interest. PO Resp. 2–3, 56–61. Patent
Owner identifies several business entities that have paid membership fees to
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Patent 10,110,898 B2

35
Petitioner and asserts that those entities should have been named as real
parties in interest. Id. at 56–58.
Petitioner challenges Patent Owner’s assertions, arguing that Unified
Patents Inc. is the sole real party in interest. Pet. Reply 15–24. Petitioner
cites evidence that it alone controls this proceeding and does not
communicate with its members about potential validity challenges before
filing IPRs. Id. at 18–19 (citing Ex. 2152, 10–11; Ex. 2138, 31:25–33:2,
222:16–223:4).9 Petitioner avers that it searched for and could not identify
any communications with its members regarding the ’898 patent or this
proceeding other than public announcements. Id. at 19–20 (citing Ex. 2013;
Ex. 2161, 68:22–69:910). Petitioner further points out that no alleged
unnamed real party in interest would be subject to a time bar under 35
U.S.C. § 315(b). Id. at 20.
Based on the foregoing facts, we determine that Petitioner has
adequately identified the real party in interest. Patent Owner has introduced
no evidence specific to this proceeding that causes us to question Petitioner’s
identification, and has not identified an aspect of Petitioner’s business
structure that we view as showing the alleged unnamed real parties in
interest are clear beneficiaries with respect to this proceeding that have a
preexisting, established relationship with Petitioner.
Patent Owner does not allege that inclusion of the business entities it
identifies as real parties in interest would have barred the Petition under 35
U.S.C. § 315. Aside from a bar defense, under the Board’s precedential

9 Ex. 2152 does not have a corresponding redacted version. Ex. 2138 is
redacted as Ex. 1040.
10 Ex. 2161 is redacted as Ex. 1043.
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Patent 10,110,898 B2

36
decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., our
jurisdiction to consider a petition does not require a “correct” identification
of all real parties in interest in a petition. Case IPR2015- 00739, slip op. at 6
(PTAB March 4, 2016) (Paper 38) (precedential); see also Blue Coat Sys.,
Inc. v. Finjan, Inc., Case IPR2016-01444, slip op. 10 (PTAB July 18, 2017)
(Paper 11) (“Evidence [of failure to identify all real parties in interest] is, at
best, suggestive of an issue that is not jurisdictional.”). We understand that
on a more fully developed record, the business entities may, in fact, be
shown to be estopped, but we leave that determination for when it arises.
We conclude that membership in a technology zone is, without more,
insufficient to establish that an entity is a real party in interest.
G. Constitutionality Arguments
Patent Owner asserts that the “Board lacks the authority to issue a
Final Written Decision in this proceeding because the Administrative Patent
Judges (‘APJs’) are principal officers of the United States that must be
appointed by the President and confirmed by the Senate.” PO Resp. 54.
According to Patent Owner, the Federal Circuit’s decision in Arthrex, Inc. v.
Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), “did not actually fix
the problem.” Id. at 55.
We decline to consider Patent Owner’s constitutional challenge as the
issue has been addressed by the Federal Circuit. See Arthrex, 941 F.3d at
1328.
IV. SUMMARY
We determine that Petitioner establishes, by a preponderance of the
evidence, that claims 1, 3–5, 7, and 8 are unpatentable as obvious over
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37
H.264 alone and that claims 1, 3–5, 7, and 8 are unpatentable as obvious
over the combination of H.264 and Kim.
Claims
35
U.S.C.
§
Reference(s)/
Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 3–5, 7, 8 103 H.264 1, 3–5, 7, 8
1, 3–5, 7, 8 103
H.264 and
Kim
1, 3–5, 7, 8

Overall
Outcome

1, 3–5, 7, 8

V. ORDER
It is, therefore,
ORDERED that:
claims 1, 3–5, 7, and 8 are unpatentable under 35 U.S.C. § 103
as obvious over H.264; and
claims 1, 3–5, 7, and 8 are unpatentable under 35 U.S.C. § 103
as obvious over H.264 and Kim.
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Patent 10,110,898 B2

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FOR PETITIONER:

Andrew R. Sommer
GREENBERG TRAURIG, LLP
sommera@gtlaw.com

Roshan S. Mansinghani
Ashraf Fawzy
Jonathan Bowser
UNIFIED PATENTS INC.
roshan@unifiedpatents.com
jbowser@unifiedpatents.com
afawzy@unifiedpatents.com

David L. Cavanaugh
WILMER CUTLER PICKERING
HALE AND DORR, LLP
david.cavanaugh@wilmerhale.com

FOR PATENT OWNER:

Brent N. Bumgardner
Thomas C. Cecil
Barry J. Bumgardner
Matthew C. Juren
Andrew J. Wright
Christopher G. Granaghan
NELSON BUMGARDNER ALBRITTON P.C.
bbumgardner@nbclaw.net
tom@nelbum.com
barry@nelbum.com
matthew@nelbum.com
andrew@nbafirm.com
chris@nbafirm.com