paper no. filed: february 10, 2017 united states patent ... · petition for inter partes review –...

Paper No. __ Filed: February 10, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________________

HTC AMERICA, INC.

Petitioner

v.

VIRGINIA INNOVATION SCIENCES, INC.

Patent Owner

____________________

Patent No. 8,903,451 ____________________

PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT NO. 8,903,451

Petition for Inter Partes Review – Patent No. 8,903,451

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TABLE OF CONTENTS

I. Introduction ..................................................................................................... 1

II. Mandatory Notices Under 37 C.F.R. § 42.8 ................................................... 1

A. Real Party-in-Interest ........................................................................... 1

B. Related Matters ..................................................................................... 1

C. Lead and Back-Up Counsel .................................................................. 4

III. Payment Of Fees Under 37 C.F.R. § 42.15(a)................................................ 4

IV. Grounds For Standing ..................................................................................... 4

V. Precise Relief Requested For Each Claim Challenged .................................. 5

A. Claims for Which Review is Requested ............................................... 5

B. Statutory Grounds of Challenge ........................................................... 5

VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 7

VII. The ’451 Patent ............................................................................................... 8

A. Overview of the ’451 Patent ................................................................. 8

B. The ’451 Patent Prosecution History ................................................. 12

C. The IPR History of the Related ’471 Parent Patent ........................... 12

VIII. Claim Construction ....................................................................................... 14

IX. Detailed Explanation of Grounds For Unpatentability Under The Broadest Reasonable Construction ............................................................... 16

A. Summary of Nam (Ex. 1005) ............................................................. 17

B. Ground 1 Nam and Seaman Render Claims 1, 20, and 21 Obvious .............................................................................................. 18

1. Claim 1 ..................................................................................... 18

2. Claim 20 ................................................................................... 33

3. Claim 21 ................................................................................... 35

C. Ground 2 Nam, Seaman, and Takeda Render Claims 30-34 and 40 Obvious ......................................................................................... 38

1. Claim 30 ................................................................................... 38

2. Claim 31 ................................................................................... 47

3. Claim 32 ................................................................................... 49


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4. Claim 33 ................................................................................... 52

5. Claim 34 ................................................................................... 53

6. Claim 40 ................................................................................... 55

D. Ground 3 Nam, Seaman, and Reynolds Render Claims 20 and 21 Obvious ......................................................................................... 58

1. Claim 20 ................................................................................... 58

2. Claim 21 ................................................................................... 58

X. Conclusion .................................................................................................... 64


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LIST OF EXHIBITS

1001 U.S. Patent No. 8,903,451 (“the ’451 patent”)

1002 File History of U.S. Patent No. 7,899,492 (U.S. Patent Application No. 11/165,341 (“the ’341 application”))

1003 Declaration of Dr. Kevin C. Almeroth

1004 Curriculum Vitae of Dr. Kevin C. Almeroth

1005 U.S. Patent No. 7,480,484 to Nam (“Nam”)

1006 U.S. Patent No. 6,781,635 to Takeda (“Takeda”)

1007 U.S. Provisional Application No. 60/588,358 (“the ’358 provisional application”)

1008 U.S. Patent No. 6,902,427 to Kuo (“Kuo”)

1009 Opinion and Order, Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd., No. 2:12-cv-00548, Dkt. 413 (E.D. Va. Jan. 8, 2014)

1010 U.S. Patent No. 7,580,005 to Palin (“Palin”)

1011 Institute of Electrical and Electronics Engineers, The Authoritative Dictionary of IEEE Standard Terms (7th Ed., IEEE Press 2000)

1012 The Merriam Webster Dictionary (New Ed., Merriam-Webster Inc. 2004)

1013 Digital Visual Interface DVI Revision 1.0, April 2, 1999 1014 U.S. Patent No. 7,236,209 to Martin (“Martin”) 1015 U.S. Patent Application Publication No. 2004/0223614 A1 to

Seaman (“Seaman”) 1016 U.S. Patent Application Publication No. 2003/0128197 A1 to Turner

(“Turner”) 1017 RESERVED 1018 European Patent Application No. EP 1 175 069 A1 to Matsubara et

al. (“Matsubara”) 1019 File History of U.S. Patent No. 8,903,451 (U.S. Patent Application


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No. 14/177,396 (“the ’451 application”)) 1020 Korean Patent No. 10-2004-0004307 to Yoo et al. (“Yoo”), English

translation of Yoo, and certificate of translation of Yoo. 1021 U.S. Patent No. 6,663,420 to Xiao (“Xiao”) 1022 Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd.,

No. 2:12-cv-00548, Dkt. 159-1 (E.D. Va. Aug. 26, 2013) (Exhibit A, VIS Opposition to Samsung’s Motion for Summary Judgment)

1023 U.S. Patent No. 7,295,608 to Reynolds (“Reynolds”) 1024 International Published Application WO 97/31445 to Carmel et al.

(“Carmel I”) 1025 International Published Application WO 99/10836 to Carmel et al.

(“Carmel II”) 1026 U.S. Patent No. 7,899,492 (“the ’492 patent”) 1027 U.S. Patent No. 7,920,623 to Stone et al. (“Stone”) 1028 U.S. Patent No. 7,020,121 to Hardacker et al. (“Hardacker”) 1029 U.S. Published Patent Application no. 2004/0158873 to Pasqualino

(“Pasqualino”)

Petition for Inter Partes Review Patent No. 8,903,451

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I. INTRODUCTION

HTC America, Inc. (“Petitioner”) requests inter partes review of claims 1,

20, 21, 30-34, and 40 (“challenged claims”) of U.S. Patent No. 8,903,451 (“the

’451 patent”) (Ex. 1001), which, according to PTO records, is assigned to Virginia

Innovation Sciences, Inc. (“Patent Owner”). For the reasons set forth below, the

challenged claims should be found unpatentable and canceled.

II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8

A. Real Party-in-Interest

Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner identifies HTC America, Inc.

and HTC Corporation as the real parties-in-interest.

B. Related Matters

In accordance with 37 C.F.R. § 42.8(b)(2), Petitioner identifies the following

related matters. The Patent Owner (“PO”) asserted the ’451 patent and/or related

patents against Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,

and Samsung Telecommunications America LLC; LG Electronics, Inc., LG

Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc.; HTC

Corporation and HTC America, Inc.; and Amazon.com, Inc. in the following

patent litigations:

Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd.,

No. 2:12-cv-00548 (E.D. Va.) (terminated)


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No. 2014-1477 (Fed. Cir.)

Virginia Innovation Sciences, Inc. v. LG Electronics, Inc., No. 1:16-

cv-00128 (E.D. Va.) (terminated)

Virginia Innovation Sciences, Inc. v. HTC Corporation, No. 2:16-cv-

00060 (E.D. Va.) (transferred to the Alexandria Division under case

no. 1:16-cv-01350); No. 1:16-cv-01350 (E.D. Va.) (pending)

Virginia Innovation Sciences, Inc. v. Amazon.com, Inc., No. 1:16-cv-

00861 (E.D. Va.) (pending)

The ’451 patent is also a continuation of U.S. Patent Nos. 7,899,492 (“the

’492 patent”) (Ex. 1026); 8,050,711 (“the ’711 patent”); 8,145,268 (“the ’268

patent”); 8,224,381 (“the ’381 patent”); 8,417,290; and 8,712,471 (“the ’471

patent”). The ’451 patent is a parent application of the following U.S. Patent Nos.

and U.S. Patent Application Nos.: 8,948,814 (“the ’814 patent”); 9,118,794 (“the

’794 patent”); 9,286,853 (“the ’853 patent”); 9,355,611 (“the ’611 patent”);


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15/146,838 (pending). Some of these patents have been challenged in the following

IPRs:

Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc.,

IPR2013-00569 (involving the ’268 patent) (terminated); No. 2015-

1710 (Fed. Cir.)


IPR2013-00570 (involving the ’381 patent) (terminated); No. 2015-

1711 (Fed. Cir.)


IPR2013-00571, IPR2014-00557 (involving U.S. Patent No.

8,135,398) (terminated)


IPR2013-00572 (involving the ’492 patent) (terminated)





Petitioner is also filing a petitions for inter partes review of the ’853, ’711,

’492, ’471, ’814, ’611, and ’749 patents and another petition challenging the ’451

patent.


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C. Lead and Back-Up Counsel

In accordance with 37 C.F.R. §§ 42.8(b)(3)-(4), Petitioner identifies the

following lead and back-up counsel and service information. Lead counsel is

Joseph E. Palys (Reg. No. 46,508), Paul Hastings LLP, 875 15th Street NW,

Washington, DC 20005, Telephone: (202) 551-1700, Fax: (202) 551-1705, E-mail:

[email protected]; and back-up counsel is Naveen Modi (Reg.

No. 46,224), Paul Hastings LLP, 875 15th Street NW, Washington, DC 20005,

Telephone: (202) 551-1700, Fax: (202) 551-1705, E-mail: PH-HTC-VIS-

[email protected]. Petitioner consents to electronic service.

III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15(a)

The required fees are submitted herewith. The PTO is authorized to charge

any additional fees due at any time during this proceeding to Deposit Account No.

50-2613.

IV. GROUNDS FOR STANDING

Petitioner certifies that, under 37 C.F.R. § 42.104(a), the ’451 patent is

available for inter partes review, and that Petitioner is not barred or estopped from

requesting inter partes review of the ’451 patent.


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V. PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED

A. Claims for Which Review is Requested

Petitioner respectfully request review of claims 1, 20, 21, 30-34, and 40 of

the ’451 patent, and cancellation of these claims as unpatentable.

B. Statutory Grounds of Challenge

The challenged claims should be cancelled as unpatentable on the following

grounds:

Ground 1: Claims 1, 20, and 21 are obvious under pre-AIA 35

U.S.C. § 103(a) over U.S. Patent No. 7,480,484 to Nam (“Nam”) (Ex. 1005) and

U.S. Patent Application Publication No. 2004/0223614 A1 to Seaman (“Seaman”)

(Ex. 1015);

Ground 2: Claims 30-34 and 40 are obvious under pre-AIA 35

U.S.C. § 103(a) over Nam in view of Seaman and U.S. Patent No. 6,781,635 to

Takeda (“Takeda”) (Ex. 1006); and

Ground 3: Claims 20 and 21 are obvious under pre-AIA 35 U.S.C. § 103(a)

over Nam in view of Seaman and U.S. Patent No. 7,295,608 to Reynolds

(“Reynolds”) (Ex. 1023).

The ’451 patent issued from U.S. Application No. 14/177,396 (“the ’396

application”) (Ex. 1019), filed on February 11, 2014, and claims priority to U.S.

Provisional Application No. 60/588,358 (“the ’358 provisional application”) (Ex.


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1007), filed on July 16, 2004. Nam was filed on March 30, 2004, Takeda was filed

on August 11, 2000, Seaman was filed on May 8, 2003, and Reynolds was filed on

September 26, 2002. Thus, these references are prior art at least under pre-AIA 35

U.S.C. § 102(e)1.

1 Petitioner does not believe that the ’358 provisional application fully supports the

’451 patent and ’396 application, and in particular does not disclose or suggest to

one skilled in the art at least the “processing” limitations of claims 1 and 30 of the

’451 patent. (Ex. 1001, 8:45-52, 10:47-54; Ex. 1003, ¶¶247-251.) Instead, the ’358

provisional application merely discloses “processing” of received signals

generically and without detail as to any compression / decompression technologies

or formats, decoders / decoding, encoders / encoding, or anything else relating to

the above claim features. (Ex. 1007, 1-11; Ex. 1003, ¶¶247-251.) For similar

reasons, the ’358 provisional application also fails to disclose or suggest the

decoder and encoder features recited in claim 32. (Ex. 1003, ¶252.) The ’358

provisional application also provides no disclosure or suggestions to one skilled in

the art regarding the maximum throughput rate features recited in claim 20 because

it is silent regarding any type of specific level of throughput rates, much less a

maximum rate like that in this claim. (Ex. 1003, ¶253; Ex. 1007, 1-11.) Nor does

the ’358 provisional application disclose or suggest to one skilled in the art a


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While Takeda, Nam, Seaman, and Reynolds were identified during

prosecution of the ’396 application (Ex. 1019, 134-136, 138) they were not applied

in any office action. In this petition, Takeda, Nam, Reynolds and Seaman are

presented in a new light and addressed by Petitioner’s expert, Dr. Kevin Almeroth

(Ex. 1003), which was not considered by the examiner during prosecution. Thus,

that Takeda, Nam, Reynolds, and Seaman were identified during prosecution

should not preclude institution of inter partes review of the ’451 patent.

VI. LEVEL OF ORDINARY SKILL IN THE ART

A person of ordinary skill in the art at the time of the alleged invention of

the ’451 patent would have had (1) the equivalent of a four-year degree from an

cellular phone or apparatus that is configured to receive power from a high definition

digital television like that recited in at least claims 11 and 30. (Id., ¶254.) Instead,

that specification merely discloses power in general terms relating to a mobile

device battery. (Id.; Ex. 1007, 3, 4.) To the extent PO attempts to swear behind any

prior art, it will need to establish invention of the subject matter of the claims prior

to the filing date of such prior art. As explained below, the prior art discloses or

suggests the limitations of the challenged claims whether the time of the alleged

invention is based from the June 24, 2005 (filing date of the parent ’492 patent) or

July 16, 2004 timeframes. (Ex. 1003, ¶¶43-45.)


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accredited institution (e.g., a B.S. degree) in computer science, computer

engineering or the equivalent; (2) a working knowledge of wireless networking and

video transcoding technologies; and (3) at least two years of experience in related

hardware/software analysis, design, and development. Additional graduate

education could substitute for professional experience, while significant experience

in the field might substitute for formal education. (Ex. 1003, ¶¶43-45.)2

VII. THE ’451 PATENT

A. Overview of the ’451 Patent

The ’451 patent issued on December 2, 2014, from the ’396 application filed

on February 11, 2014, which claims priority to the ’358 provisional application

filed on July 16, 2004. The ’451 patent generally relates to converting mobile

terminal multimedia signals into a format for use by an alternative display to

allegedly provide a solution to the “diminished user enjoyment of mobile terminals

because of display limitations.” (Ex. 1001, 1:40-2:16.) (Ex. 1003, ¶104.)

2 The field of art pertinent to the ’451 patent includes the fields of wireless

networking and video transcoding in computing/communication devices. Such

fields include, for example, technologies relating to displaying multimedia content

on display devices, such as a mobile phone display device and other display

devices (e.g., analog and digital display devices). (Ex. 1003, ¶43.)


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The ’451 patent’s purported solution includes providing a process where a

multimedia signal destined for a mobile terminal is converted and provided to an

alternative (e.g., external) display system. (Ex. 1001, 2:20-24.) In one aspect, a

video signal that accommodates a mobile terminal display is processed to provide a

converted video signal appropriate for an external display separate from the mobile

terminal. (Id., 2:30-39.) (Ex. 1003, ¶105.)

To provide such features, the ’451 patent describes functionality associated

with a mobile terminal signal conversion module (MTSCM). (Ex. 1001, 3:62-64.)

With respect to Figure 4, the ’451 patent explains that the MTSCM receives video

signal from a cellular phone via a wired or wireless connection (id., 4:11-24), and

“processes the video signal to provide a converted video signal that has a display

format and/or signal power level appropriate for an external display terminal 114

that is separate from the cellular phone (step 406)” (id., 4:27-30). (See also id.,

5:33-44, 6:17-58.) The MTSCM provides the converted signal to the external

display terminal to accommodate the corresponding video display on a screen at

that terminal. (Id., 4:40-53, 5:45-54, 6:59-7:5.) The ’451 patent discloses that

known and pre-existing technologies may be used to provide the video signal

conversion functions of the MTSCM, including standards “such as DVI, DVI-D,

HDMI, and IEEE1394” via conventional interfaces (id., 6:48-58) and “video cards


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that may be configured to provide the described functionality” including “Diamond

Stealth S60, ASUS v9400-X, or RADEON 7000” (id., 6:55-58). (Ex. 1003, ¶105.)

The ’451 patent discusses that, in some instances, the mobile device may

receive the video signal in a compressed format (e.g., MPEG) to accommodate the

bandwidth needed to display real-time video and audio in an uncompressed format.

(Ex. 1001, 6:18-22, 6:32-36.) The received compressed video signal may be

decompressed into a decompressed video signal using an appropriate compression/

decompression (CODEC) algorithm. (Ex. 1001, 6:22-25.) The decompressed video

signal may be provided to either a “Digital/Analog Video Encoder” (DAVE) or a

“Digital/Digital Video Encoder” (DDVE) that converts the decompressed video

signal to a format and signal power level that can be displayed on a separate and

larger analog or digital display screen. (Id., 6:37-47.) The format may include S-

video (analog video) and HDMI (digital video). (Id., 6:48-51.) (Ex. 1003, ¶106.)

The ’451 patent also explains that while the MTSCM may include functionality to

decompress signals provided in a compressed format (Ex. 1001, 6:17-28), the

decompression functionality may be provided in the cellular phone to deliver

decompressed signals to the MTSCM for converting and subsequent delivery to an

external display terminal (id., 6:29-36). (Ex. 1003, ¶106.)

The functionality of the MTSCM may reside in a separate housing

interconnecting the mobile terminal and external display device, or may be


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implemented with the mobile terminal and/or external display device. (Id., 3:62-64,

5:4-5:14, 7:18-39, 7:52-8:3.) Figure 3 of the ’451 patent shows an example of a

system accommodating such processes using an intermediary form of the MTSCM.

(Id., Fig. 3.) Figures 5 and 6 show examples of the MTSCM functionality residing

in the mobile terminal and external display terminal, respectively. (Id., Figs. 5, 6.)

(Ex. 1003, ¶107.)

As explained below, the features recited in the challenged claims, alone or in

combination, characterize conventional processes and configurations that were

known and disclosed before the time of the alleged invention, and therefore are

unpatentable. (See, e.g., Ex. 1003, ¶¶29, 46-103, 108, 112-129, 131-155, 162-168,


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204-227, 233-246; Exs. 1005, 1006, 1008, 1010, 1013, 1014, 1015, 1018, 1020,

1021, 1023, 1024, 1025, 1027, 1028, 1029.)

B. The ’451 Patent Prosecution History

The ’396 application was allowed without substantive prior art rejections

and after the applicant submitted new claims and terminal disclaimers regarding

the parent patents for the ’451 patent. (See, e.g., Ex. 1019, 257-260.) The ’451

patent later issued.

C. The IPR History of the Related ’471 Parent Patent

The ’451 patent is a continuation of the ’471 patent. (Part II.B.) A petition

for inter partes review was filed challenging claims 1, 4-7, 11-15, 21-25, 28-35,

and 49 of the ’471 patent based on combinations of prior art to US 2003/0128197

(“Turner”), JP 06-113235 (“Yasuto”), and the same Seaman reference applied in

this Petition. IPR2015-00054, Paper 8 at 5. The Board disagreed with PO’s

argument regarding these references and instituted review of all of those

challenged claims. Id., 11-20. In doing so, the Board acknowledged Seaman’s

teachings of high definition interfaces, and the positions of the Petitioner in that

proceeding relying on such teachings in combination with Turner to disclose the

claimed “providing the converted video signal to the alternative display terminal

through a digital high definition interface to accommodate displaying the video

content by the alternative display terminal.” Id., 14-15. Seaman is used in this


13

Petition to disclose similar high definition signal and interface features recited in

the challenged claims.

The Board similarly acknowledged Seaman’s disclosures of decompressing

MPEG-encoded video signals and processing the decompressed signals for output

to a display using e.g., HDMI or DVI, and that decompressed MPEG video can be

encoded in various ways, including HDTV, HDMI, or DVI. Id., 15 (citing Seaman

at ¶¶23, 47). Likewise, the Board disagreed with PO’s arguments as to why

Seaman would not have been combined with Turner given, inter alia, the

petitioner in that case “relies on Seaman not for those three components

[coder/decoder 150, MAC de/encrypter 140, and copyright protection circuit 160],

but for its teaching that, as of 2003, it was known that video signals could be

output in an HDTV format.” Id., 17.

The Board also addressed the combination of Yasuto with Seaman and

Turner regarding claim features directed toward receiving power through a

connection with a high definition television. Id., 18. In this regard, the Board was

not persuaded by PO’s arguments that Yasuto’s teachings relating to a television

receiver with a built-in charger for a telephone, would not have been combined

with the features disclosed by Turner and Seaman (id., 18-19) and that the battery

of Yasuto’s telephone would not have been adequate for processing and converting

a video signal, as recited in the claims (id., 19-20). As explained below in this


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Petition, similar to Yasuto, Takeda discloses technologies and features known prior

to the alleged invention that allows a mobile device to be charged via a display

device. (See infra Part IX.C.)

Following institution, PO requested adverse judgment and cancelled claims

1, 4-7, 11-15, 21-25, 28-35, and 49. IPR2015-00054, Paper 11. The Board entered

such judgment. IPR2015-00054, Paper 12.

As explained below, Nam discloses decompressing and converting video

signals into a format for display on an external display, and in combination with

Seaman, the decompression and conversion of such signals for providing high

definition signals via high definition interfaces would have been obvious, similar

to the Seaman and Turner combination addressed by the Board in IPR2015-00054.

(See infra Part IX.B.) Moreover, as explained below, like Yasuto relied upon in

IPR2015-00054, Takeda discloses technologies and features known prior to the

alleged invention that allows a mobile device to be charged via a display device,

and when combined with the teachings of Seaman and Nam, disclose and render

obvious similar features recited in the challenged claims in this Petition. (See infra

Part IX.C.)

VIII. CLAIM CONSTRUCTION

A claim in an unexpired patent that will not expire before a final written

decision is issued in an IPR receives the “broadest reasonable construction in light


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of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). The

’451 patent has not expired and will not expire before a final written decision will

be issued. Thus, for purposes of this proceeding, the claims of the ’451 patent

should be given their broadest reasonable construction.

Below, Petitioner addresses the construction of a claim phrase used in claim

20 for purposes of this proceeding. All other terms should be interpreted in

accordance with their plain and ordinary meaning under the broadest reasonable

interpretation standard.3 Petitioner applies these interpretations in the analysis of

the challenged claims in this Petition. (Ex. 1003, ¶¶109-110.)

Claim 20 recites the phrase “a maximum throughput rate for the encoded

3 Because of the different claim interpretation standards used in this proceeding

and in district courts, any claim interpretations submitted or implied herein for the

purpose of this proceeding are not binding upon Petitioner in any litigation related

to the ’451 patent. Specifically, any interpretation or construction of the claims

presented herein, either implicitly or explicitly, should not be viewed as

constituting, in whole or in part, Petitioner’s interpretation of such claims in any

underlying litigations involving the ’451 patent. Moreover, Petitioner does not

concede that the challenged claims are not invalid under other sections of the

Patent Act.


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digital signal is at least 10 Gigabits/second.” (Ex. 1001, 9:56-58.) That the claim

requires a “maximum” throughput rate that is “at least” a certain value makes it

unclear as to whether the claim requires or encompasses that (1) the throughput

rate for the encoded signal is 10 Gb/s or higher, or (2) the throughput rate is 10

Gb/s or lower. (Ex. 1003, ¶111.) The specification provides little help, as the only

place it refers to a throughput rate of “approximately 10 Gb/s” is in terms of an

adequate rate for many current systems, without discussing the encoded signal

(which is described later) having a maximum throughput rate of at least a certain

value, or what that would mean. (Ex. 1001, 6:1-16.) However, for purposes of this

proceeding, Petitioner addresses claim 20 under both possible interpretations.4

IX. DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY UNDER THE BROADEST REASONABLE CONSTRUCTION

As explained below, the combination of Nam in view of Seaman, Takeda,

and/or Reynolds discloses each of the limitations of claims 1, 20, 21, 30-34, and 40

and renders the claims obvious.

4 By doing so, Petitioner does not concede that this term is definite under 35 U.S.C.

§ 112. Given such an issue cannot be raised in this proceeding, Petitioner applies

the proposed interpretations in the analysis of the prior art. Petitioner reserves the

right to raise such invalidity issues regarding this term in other proceedings.


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A. Summary of Nam (Ex. 1005)

Nam discloses a multi-video interface for a mobile device that permits video

signals to be displayed at a mobile device and an external display. (Ex. 1005,

Abstract.) The features disclosed by Nam address the same problem that the ’451

patent alleges to solve ─ diminished user enjoyment of mobile terminals because

of display limitations. (See Ex. 1001, 2:14-16; Ex. 1005, 4:33-43.) Indeed, just like

the ’451 patent, which alleges the limited size and capability of a mobile terminal

screen may render enjoyment of video inconvenient, and sometimes useless (Ex.

1001, 1:56-59), Nam’s disclosed system allow video to be “more readily viewed at

higher resolution and view size” to address the desire to use an alternate display

with a “larger viewing size” and “higher resolution or quality.” (Ex. 1005, 1:15-35,

4:40-43.)

In connection with Figure 1, Nam discloses a mobile device 100 that

receives wireless image/video signals from a cellular network via transmitter 118,

decompresses the received compressed signal via processor 106, and converts the

video signals compatible with display device 104 of mobile device 100, and into

formats compatible with an external display device 120, such as NTSC, PAL, or

digital video. (Id., Fig. 1, 1:54-60, 2:3-21, 2:31-37, 2:50-3:4, 3:10-20, 3:55-4:9,

4:28-42.) (See also Ex. 1003, ¶¶112-113.)


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B. Ground 1 Nam and Seaman Render Claims 1, 20, and 21 Obvious

As explained below, the combination of Nam and Seaman discloses each of

the limitations of claims 1, 20, and 21 and renders the claims obvious. (Ex. 1003,

¶¶112-113, 122-125, 130-155, 162-168, 241-246.)

1. Claim 1

a. “An apparatus comprising:”

To the extent the preamble of this claim is construed to be limiting, Nam

discloses an apparatus (e.g., mobile device 100 or the system that incorporates

device 100) that includes “a multi-video interface [which is] configured to permit

information present at the mobile device to be viewed at an external display.” (Ex.

1005, Abstract). Mobile device 100 can be a cellular phone (id., 1:66-67) which

includes a processing unit 106 that processes video signals received by device 100

(id., 2:64-3:20) and display interface 102, which is a multiple display interface or a

multi-video interface and is adapted to convert the images and/or motion video

produced by the image/video processing unit 106 into one of any of a variety of

output formats, such as NTSC, PAL, or digital video for external display 120 (id.,

4:28-32). Thus, the system of Fig. 1 or device 100 of Nam is an apparatus. (Id.,

Fig. 1, 3:64-4:9, 4:28-43; Ex. 1003, ¶¶131-132; citations and analysis for the

remaining elements of this claim.)

b. “an input interface configured for receiving a multimedia signal appropriate for displaying a multimedia content on a mobile terminal,


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wherein the multimedia signal is a compressed digital signal that is received through a wireless communication network;”

Nam discloses these limitations. For example, Nam discloses that mobile

device 100 includes a transceiver 118 and baseband processing unit 116 (which

individually or collectively acts as an input interface) that wirelessly receives a

video signal appropriate for displaying video content on display 104 of mobile

device 100. (See Ex. 1005, Fig. 1, 2:31-37, 2:50-3:2.) Specifically, Nam explains:

The transceiver 118 is configured to transmit and receive

wireless signals to and from another wireless transceiver

(not shown). The wireless signals can comprise a variety

of data, including data representative of images/video,

sound, and/or data. The transceiver 118 and the

processing unit 116 . . . reassemble received wireless

signals. At least one of the transceiver 118 and the

processing unit 116 may include a memory, controller,

processor, router, switch, bus, etc. to perform the wireless

communication functions. In one embodiment, the

transceiver 118 may comprise an antenna and the

processing unit 116 may provide all other functionalities.

(Ex. 1005, 2:50-63; Ex. 1003, ¶133.) The received signal is a multimedia signal

and it comprises a video signal because Nam discloses that the received “wireless

signals can comprise a variety of data, including data representative of

images/video, sound, and/or data.” (Ex. 1005, 2:50-54; Ex. 1003, ¶134.)


20

Furthermore, the received multimedia signal is appropriate for displaying a

multimedia content on a mobile terminal because the received signal (after some

processing)5 can be displayed on the screen of the mobile terminal:

In another example, if input signals are coming from the

transceiver 118 and such input signals are to be displayed at the

display 104, then the processing unit 106 decompresses the

input signals, transmits the decompressed input signals to the

display interface 102, the decompressed input signals are

conditioned into signals compatible with the display 104, and

are transmitted to the display 104 for presentation.

5 In the related Eastern District of Virginia action involving the ’492 parent patent,

the Court held that a received signal is appropriate for a mobile terminal if it can be

processed by the mobile terminal and/or displayed on the screen of the mobile

terminal. (See Ex. 1009 at 29 (“Palin receives a video signal in a compressed

format as data packet(s), which format is appropriate for the mobile terminal. . . .

That the data received in Palin is in a format appropriate for the mobile terminal is

further evidenced by the mobile terminal’s ability to process and/or display the

received data packets.”) (emphasis added).) This understanding is consistent with

how one of ordinary skill in the art would understand the functionality of Nam’s

mobile terminal in relation to this claim feature. (Ex. 1003, ¶134.)


21

(Ex. 1005, 3:10-17.) Display 104 is a display of the mobile device. (Id., 2:32-34.)

(Ex. 1003, ¶134.) Nam also discloses that the received “wireless signals can

comprise a variety of data, including data representative of images/video, sound,

and/or data.” (See Ex. 1005, 2:50-54.) Because such data was known to one skilled

in the art at the time of the alleged invention as being a multimedia signal, the data

provided and subsequently displayed would thus include multimedia content. (Ex.

1003, ¶134.)

Furthermore, the received video signal is a compressed digital signal

because Nam discloses the received signal is decompressed by the processing unit

106. (Ex. 1005, 3:10-13 (“[I]f input signals are coming from the transceiver 118

and such input signals are to be displayed at the display 104, then the processing

unit 106 decompresses the input signals.”).) (Ex. 1003, ¶135.) As such, Nam

necessarily discloses that the video signal received by mobile device 100 is

compressed, as one skilled in the art would have realized the decompression

features of Nam would be meaningless if the signal was not compressed when it

was received by transceiver 118. (Ex. 1003, ¶135.) Indeed, PO and the Board

previously recognized that a video signal received from a cellular network, like

that disclosed by Nam (Ex. 1005:1:66-2:2, 2:50-63, 3:10-17, Fig. 1), necessarily is

compressed. See IPR2013-000572 (Paper 17), 8 (“[O]ne of ordinary skill in the art

would understand the video data received over a cellular network to be in a


22

compressed format.”). Thus, the received video signal disclosed by Nam is

compressed. (Ex. 1003, ¶135.)

Moreover, Nam explains that mobile device 100 can be a cellular phone (Ex.

1005, 1:66-2:2) that receives wireless “image/video” signals at transceiver 118,

which may comprise an antenna and performs “wireless communication functions”

that “reassemble received wireless signals.” (Id., 2:50-63, 3:10-17, Fig. 1.)

Processing unit 106 receives the image/video signals after the mobile device 100

receives the signals via transceiver 118. Because Nam discloses decompressing

such received wireless signals, Nam necessarily discloses that mobile device 100

receives the multimedia signals in a compressed format through a wireless

communication network. (Ex. 1003, ¶136.)

c. “at least one processing unit configured for processing the multimedia signal;”

d. “wherein said processing the multimedia signal comprises decompressing the compressed digital signal to a decompressed digital signal,”

e. “wherein said processing the multimedia signal further comprises encoding the decompressed digital signal to produce an encoded digital signal, and”

Nam discloses that processing unit 106 and display interface 102 are

configured to perform processing of the received video signal for use by external

display 120. (Ex. 1005, 2:64-66, 3:10-20, 4:28-32; Ex. 1003, ¶137; see also

citations and analysis above for claim elements 1.a-1.b.) Nam discloses that the


23

configuration of the components of device 100 can vary and that processing unit

106 and the display interface 102 can be on the same chip and thus may form a

component that operates as a processing unit. (Ex. 1005, 3:41-43 (stating that “the

processing units 106 and 110 and the display interface 102 may comprise another

chip”); see also id., 3:39-54.) Also, even when not on a same chip, processing unit

106 and display interface 102 are also “at least one processing unit” because they

are one or more (i.e., two) processing units that perform the processing recited in

claim elements 1.d-1.e.

For example, processing unit 106 is configured to decompress the

compressed video signal received by transceiver 118 and baseband unit 116. (Ex.

1005, Fig. 1, 2:64-66, 3:10-20.) Thus, processing unit 106 provides a

decompressed digital signal that is provided to display interface 102 for further

processing. (Ex. 1005, 3:10-17, 4:28-32; Ex. 1003, ¶138.)

Display interface 102 not only conditions the received video signals into

signals compatible with display 104 (display of the mobile device) (Ex. 1005,

3:12-17), but also converts the decompressed video signal received from

processing unit 106 into a digital video display format appropriate for external

display 120, which can be a television compatible with digital video formats (id.,

4:3-9, 4:28-32 (“[D]isplay interface 102 . . . is adapted to convert the . . . motion

video produced by the image/video processing unit 106 into one of any of a variety


24

of output formats, such as . . . digital video.”).) (See also id., 3:64-66 (“The

external display 120, e.g., a television, monitor, or other display type, receives

and/or transmits image/video signals with the display interface 102.”); 1:54-60,

3:10-20, 4:33-43; Ex. 1003, ¶139.)

By converting the decompressed video signal to a digital video format for

display 120, display interface 102 encodes the decompressed signal into an

encoded signal because one of ordinary skill in the art would have understood that

the plain and ordinary meaning of “encoding” in the context of the ’451 patent is

consistent with converting or changing. For instance, The Merriam Webster

Dictionary (New Ed., Merriam-Webster Inc. 2004), 237 (Ex. 1012) defines

“encode” as “to convert (a message) into code.” The Authoritative Dictionary of

IEEE Standard Terms (7th Ed., IEEE Press 2000), 238 (Ex. 1011) defines “convert”

consistent with “to change.” Thus, the plain and ordinary meaning of “encoding

the decompressed digital signal” in the context of the ’451 patent is converting or

changing the decompressed digital signal. This is consistent with the understanding

of “encoding” in the context of the claims and the specification. For example,

claim element 1.f (below) recites that “the encoded digital signal comprises a

decompressed high definition digital video signal” and that the signal is

transmitted. (Ex. 1001, 8:51-54.) The specification of the ’451 patent describes

encoders DAVE and DDVE that “prepare” and “convert” the decompressed


25

multimedia signals sent from decoder 304a “to the format(s) . . . required for the

terminals to which they interface. (Id., 6:37-47, Fig. 3.) (Ex. 1003, ¶140.)

Accordingly, taking into consideration the common understanding of

“encoding” and the language of the claims and specification, one of ordinary skill

in the art would have understood that “encoding the decompressed digital signal to

produce an encoded digital signal” in the context of the claims is consistent with

the understanding that the decompressed digital signal is converted or changed to a

format for use by the high definition television recited in the claim. (Ex. 1003,

¶141.) As explained, display interface 102 does just that.

Thus, processing unit 106 and display interface 102 collectively are “at least

one processing unit” that processes the video signal like that recited in claim

elements 1.c-1.e because, as explained, processing unit 106 decompresses the

received compressed video signal (claim 1.d) and display interface 102 converts

(encodes) the decompressed video signal into an encoded digital signal (e.g., into a

digital video format signal compatible for external display 120). (Ex. 1005, 4:28-

32)). (Ex. 1003, ¶142.)

f. “wherein the encoded digital signal comprises a decompressed high definition digital video signal; and”

g. “a high definition digital output interface configured for providing the encoded digital signal for transmission;”


26

As explained, Nam discloses that the processing unit 106 decompresses the

compressed video signal received by the transceiver 118 and/or baseband unit 116

(Ex. 1005, 3:10-14) and provides the decompressed signal to display interface 102

for converting into a digital video display format for use by external display 120

(id., 4:28-32). (Ex. 1003, ¶143; see also analysis and citations above for claim

elements 1.c-1.e.) Because Nam explains that display interface 102 is “adapted to

convert the images and/or motion video produced by the image/video processing

unit 106 into one of any of a variety of output formats,” including “digital video,”

Nam discloses that display interface encodes the decompressed signal from

processing unit 106, which necessarily results in a decompressed encoded digital

video signal. (Ex. 1005, 4:28-32; Ex. 1003, ¶143.) Indeed, one of ordinary skill in

the art would have understood this from the disclosure of Nam given that Nam

does not expressly mention that the signal is compressed again. (See generally Ex.

1005; Ex. 1003, ¶143.)

Nam discloses that external display 120 can be a television, monitor, or other

display type, such as a plasma display, LCD, rear projection display, CRT, or other

types compatible with “conventional video format(s), such as “digital video

formats.” (Ex. 1005, 3:64-4:9.) This arrangement is like that disclosed in the ’451

patent, which describes an interface 306 connecting to an alternative display

terminal via conventional display formats (Ex. 1001, Fig. 3, 6:48-58) and explains


27

that “[e]xamples of digital systems include HDTV, LCD and plasma” (id., 3:55-

58). (Ex. 1003, ¶144.) Nam thus describes an interface connecting external display

120 to display interface 102 that provides the converted video signal to external

display 120 for displaying video content. (Ex. 1005, Fig. 1, 3:57-60, 3:64-4:4;

4:28-43; Ex. 1003, ¶144.) The connection and related components to provide the

connection between display interface 102 and external display 120 is a digital

output interface because it is in operative communication with display interface

102 and provides the decompressed encoded video signal to display 120 to

accommodate displaying video content. (Ex. 1003, ¶144.)

While Nam does not expressly disclose that that display interface 102

converts the decompressed video signals into decompressed high definition (HD)

digital video signals, or that mobile device 100 includes a “high definition” digital

output interface that is configured for providing the encoded digital signal for

transmission, it would have been obvious to implement such features based on the

disclosure of Seaman.

Seaman describes a device that delivers a video-on-demand feed to an input

of a TV set (Ex. 1015, ¶1). In particular, Seaman discloses “a small dedicated

device” that is “capable of delivering a video on demand feed to the input of a TV”

by connecting it to the TV, capable of processing compression formats “such as

MPEG-2, MPEG-3, MPEG-4 etc.,” and output signals in encoded format such as


28

“NTSC, PAL, SECAM, HDTV, SDTV, RGB, YcbCr, YpbPr, S-Video, CVBS,

SDI, HDMI, and DVI.” (Id., ¶¶11-12, 23, 25, 31, 37, 47, 62, claim 7, Figs. 1-3.)

(Ex. 1003, ¶¶145-146.) Thus Seaman, in the same field of endeavor as Nam,

discloses that a received video signal can be processed to provide a high definition

digital signal for use by a high definition display, such as an HD television. (Ex.

1003, ¶146.)

It would have been obvious to one skilled in the art at the time of the alleged

invention to configure the functionality relating to display interface 102 of mobile

device 100 to process and provide HD digital video signals because it would have

allowed Nam’s system to work with known types of display formats and devices,

such as high definition (HD) television displays to provide improved viewability

options of the video content displayed by external display 120. (Ex. 1003, ¶147.) It

also would have been obvious to one skilled in the art at that time to configure the

functionality relating to display interface 102 to include an interface configured to

transmit the HD digital video signals (e.g., a high definition digital output

interface) because such features would have allowed Nam’s system to operate with

high definition type display devices that provide improved quality of video content

that is displayed by external display 120, such as high definition (HD) televisions.

(Ex. 1003, ¶¶147-148.)


29

Such a skilled person would have been motivated to implement such features

given that the use of HD video signals and HD televisions, and the technology used

to convert received video signals to such formats, was well known prior to the

alleged invention of the ’451 patent, as demonstrated by Seaman. Indeed, as

discussed above, Seaman describes the use of high definition formats and

interfaces in a system similar to that disclosed by Nam where multimedia signals

are received and converted for display on an external display. (See, e.g., Ex. 1015,

Figs. 1-3, ¶¶11-12, 23, 25, 31, 37, 47, 62; Ex. 1005, Fig. 1, 4:28-43; Ex. 1003,

¶149.) Nam also explains that external display 120 can be a television or a monitor

that is compatible with conventional video formats (Ex. 1005, 3:64-65, 4:3-9). (Ex.

1003, ¶149.) (See also Ex. 1020, 1 (Abstract), 2, 3, 5 (describing a mobile device

system for converting received video data for viewing on a “HD class” digital

television); Ex. 1003, ¶150.)6

Such a skilled person would have been similarly motivated to implement an

interface that is configured to receive and transmit the converted HD signals

6 Ex. 1020 is not relied upon as a prior art reference for the basis of this ground, but

is instead referenced to disclose features consistent with the state of the art known

to one of ordinary skill at the time of the alleged invention of the ’451 patent. (Ex.

1003, ¶150.)


30

provided by display interface 102. (Ex. 1003, ¶151.) As explained above, one

skilled in the art would have been motivated to modify Nam’s system to provide

HD digital video signals for use by a compatible television in light of Seaman and

the knowledge of the art by such a person at the time of the alleged invention.

Likewise, one skilled in the art would have been motivated to provide an interface

capable of transmitting decompressed HD digital video signals to a display that

was compatible for displaying the HD signals, such as an HD television (Ex. 1003,

¶151.) Given that Nam explains that display interface 102 converts video signals

into a format compatible with digital display devices (Ex. 1005, 3:64-4:9), and

Seaman discloses a similar system that provides HD signals for display (Ex. 1015,

¶47), such a skilled person would have found it obvious to configure Nam’s mobile

device 100 with an HD digital output interface that provides the encoded HD

digital video signals for transmission to an external display, which in the modified

system would include an HD television. (Ex.1003, ¶151.)

Based on the knowledge of such a person and the teachings of Nam and

Seaman, one of ordinary skill in the art would have had reason to expand the

capabilities of the modified system to accommodate HD video signal formats by

configuring the mobile device of Nam to encode the decompressed video signals

provided by processing unit 106 to HD encoded digital video signals for use by an

HD digital output interface for sending the signals to the external display. (Ex.


31

1003, ¶¶151-152.) Such a skilled person would have recognized that such

modifications would have been a predictable and common sense choice in the

design of the system, which would have applied known technologies (e.g., known

HD signals and interface technologies like those disclosed by Seaman) to perform

known operations consistent with such common technologies (e.g., providing HD

formatted digital signals for display on HD display devices via an interface that

provides HD signals to compatible HD displays). (Ex. 1003, ¶152.) KSR Int’l Co.

v. Teleflex Inc., 550 U.S. 398, 417 (2007).

Moreover, one skilled in the art would have realized that the functionality of

the combined system would not be affected by such an implementation, as the

modified system would still provide video signals for display on an external and

larger display in the manner disclosed by Nam as modified above. (Ex. 1003,

¶152.) As such, one skilled in the art would have recognized that the modification

would have been a predictable and common sense implementation that was within

the capabilities of such a person at the time of the alleged invention. (Id.) KSR, 550

U.S. at 417. Indeed, one skilled in the art would have been aware of the wide

variety of ways in which received content could be converted, including converting

to HD digital video signals. (Ex. 1003, ¶153.) Thus, such a person would have

known to use whatever techniques were available and appropriate to better

facilitate display on external display 120, such as using HD digital formats and


32

related HD output interfaces without undue experimentation, to achieve the

predictable results of displaying multimedia content in a user-friendly way, as

there would have been a natural motivation to support as many output video

formats as possible in Nam’s system. (Id.)

h. “wherein the wireless communication network is a cellular communication network or a wireless local area network; and”

Nam discloses that mobile device 100 can be a cellular phone (Ex. 1005,

1:66-2:2) that receives wireless “image/video” signals at transceiver 118, which

may comprise an antenna and performs “wireless communication functions” that

“reassemble received wireless signals.” (Id., 2:50-63, 3:10-17, Fig. 1; Ex. 1003,

¶154.) Processing unit 106 receives and processes the image/video signals received

from transceiver 118, which are later converted to the appropriate digital video

format by display interface 102. (Ex. 1005, 2:64-66, 3:10-20, 4:28-32.) Because

Nam discloses mobile device as a “cellular phone” that receives wireless

image/video signals, Nam necessarily discloses that the signals are received from a

cellular communication network. (Ex. 1003, ¶154.) Indeed, one skilled in the art

would have recognized that without such a network, the wireless signals received

by transceiver 118 by the cellular phone (mobile device) 100 could not be

performed, as Nam discloses they are. (Id.) Moreover, one skilled in the art would

have known that cellular phones at the time of the alleged invention receive

wireless signals over a cellular network (hence the name cellular phone). (Id.)


33

i. “wherein the mobile terminal is a cellular phone or a personal digital assistant (PDA).”

As explained above, Nam discloses that the “mobile device 100 may be, but

is not limited to, a cellular phone, personal digital assistant (PDA) . . . .” (Ex. 1005,

1:66-67; Ex. 1003, ¶155; analysis above for claim element 1.h.)

2. Claim 20

a. “The apparatus of claim 1, wherein a maximum throughput rate for the encoded digital signal is at least 10 Gigabits/second.”

Under the interpretation that this claim encompasses a throughput rate for

the encoded digital signal that is 10 Gigabits/second or less (see Part VIII), the

combined system of Nam and Seaman discloses such features. As explained above

for claim 1, the modified system discloses transmitting the converted HD digital

video signals via an HD output interface. (See analysis above for claim elements

1.f-1.g; Ex. 1003, ¶162.) It was known prior to the alleged invention of the ’451

patent that maximum throughput rates under 10 Gb/s could be achieved for high

definition video signals. (Ex. 1003, ¶162.)

For example, it was known that IEEE 1394b-2002 (commonly known at that

time as FireWire 800) could achieve a throughput rate of roughly 3200 Mb/s (1 Gb

= 1000Mb), which is below the claimed “maximum” throughput rate of 10 Gb/s


34

under the first interpretation of the claim. (See Part VIII; Ex. 1003, ¶163.)7 Other

conventional interfaces and corresponding communication paths and protocols

were known as disclosed by Nam and Seaman (Ex. 1005, 3:64-4:9; Ex. 1015, ¶47.)

Indeed, one of skill in the art would have understood the many applications of

various network standards and communications protocols, and thus would have

been motivated to connect a mobile device to a network or communication path

that provided date rates appropriate for the application. (Ex. 1003, ¶163.) One

skilled in the art would have thus been motivated to configure the high definition

digital interface in the above discussed combined system to be compatible with

such throughput requirements provided by the existing technologies disclosed by

Nam and Seaman, and known to one skilled in the art. (Ex. 1003, ¶163.)8

7 The ’451 patent acknowledges that IEEE 1394 was a known “standard” that can

be used to provide the claimed digital signals to the display device. (Ex. 1001, Fig.

3, 6:50-51.) This understanding is consistent with the understanding of one skilled

in the art at the time of the alleged invention. (Ex. 1003, ¶163; Ex. 1027, 1:13-31,

2:53-67, 4:25.)

8 PO’s litigation expert acknowledged when discussing the ’492 parent patent, that

“[o]ne of ordinary skill in the art would have known that video content could be

converted” and that “[t]he specific conversion techniques of which one of ordinary


35

Given the disclosures of Nam and Seaman, and the knowledge of one of

ordinary skill at the time of the alleged invention, a skilled artisan at that time

would have known to use whatever techniques and technologies that were

available and appropriate to better facilitate displaying high definition video

signals on external display 120, and thus have been motivated to implement the

high definition interface in the combined system to accommodate the appropriate

throughput rate corresponding to the application, as discussed above. (Ex. 1003,

¶164.) Such a modification would have been a common sense and predictable

design implementation to how the combined Nam and Seaman system would have

provided the video signals for display on an external device at the time of the

alleged invention. (Ex. 1003, ¶164.) See KSR, 550 U.S. at 417.

3. Claim 21

a. “The apparatus of claim 20, wherein the maximum throughput rate supports said transmission of the encoded digital signal in real time.”

As explained above for claim 20, under the interpretation that the claimed

throughput rate for the encoded digital signal through the HD digital output

interface is 10 Gigabits/second or less (see Part VIII), the combination of Nam and

Seaman discloses such features. (See analysis and citations above for claim 20; Ex.

skill in the art would be aware would depend on both the video content and the

display device.” (Ex. 1022, ¶7.)


36

1003, ¶165.) Further, one of ordinary skill in the art would have found it obvious to

configure the combined system such that the throughput rate used by the modified

system supports transmitting the encoded digital signal to external display 120 in

real time. One skilled in the art at the time of the alleged invention would have

been motivated to implement such features to allow the modified system to provide

video content in real time to enhance the viewing experience of a user using the

external display. (Ex. 1003, ¶165.)

Such a person would have had reason to configure the combined system to

support such features given the technology and concept of displaying video content

in real time on an alternate display was known before the alleged invention of the

’451 patent. For example, Nam discusses that its system is configured to

simultaneously display video content on display 104 of mobile device 100 and

external display 120. (Ex. 1005, 1:54-60, 4:1-3) and Seaman discloses that its

system provides video on demand for display on external display, and operates in

“real time” so that the system is “able to receive it as fast as it needs to be

displayed.” (Ex. 1015, Fig. 1, ¶¶10-11, 55.) Indeed, Seaman discloses that its

receiver (which receives multimedia content) “is capable of receiving real time

video” and that “video can be displayed at the same rate that it is received.” (Id.,

claim 4.) Thus, Seaman discloses that processing and transmitting video signals to

an external display device can occur at a rate to support real time video display.


37

(Ex. 1003, ¶166.)

Given the knowledge of one skilled in the art at the time of the alleged

invention, and the disclosures of Seaman and Nam, one of ordinary skill in the art

would have been motivated to configure the HD output interface integrated in the

above described Nam and Seaman system to transmit the HD video signals to

external display 120 in real time to allow the display to present the video content in

real time. Such a skilled person would have thus configured the interface in the

combined system to have a throughput rate that supported such real time

transmissions. (Ex. 1003, ¶167; see also Ex. 1020, 1-3, 6.9)

One of ordinary skill in the art would have understood that implementing

such a modification would have been a common sense and predictable

implementation of known technologies for known purposes (e.g., using known

interfaces and display equipment to provide real time video display, as described

by Seaman and Nam), which would have been within the realm of knowledge of

one skilled in the art at the time of the alleged invention. (Ex. 1003, ¶168.) See

KSR, 550 U.S. at 417. Indeed, given the benefits for providing such real time

9 Ex. 1020 is referenced to disclose features consistent with the state of the art

known to one of ordinary skill at the time of the alleged invention. (Ex. 1003,

¶167.)


38

display capabilities at the time of the alleged invention, as suggested by Seaman,

one skilled in the art would have sought to implement technologies that supported

real time video signal transmission that supported Nam’s goal of providing video

content for display on an external display, including simultaneously with the

display of the mobile device. (Ex. 1003, ¶168.)

C. Ground 2 Nam, Seaman, and Takeda Render Claims 30-34 and 40 Obvious

As explained below, the combination of Nam, Seaman, and Takeda discloses

each of the limitations of claims 30-34 and 40 and renders the claims obvious. (Ex.

1003, ¶¶112-125, 178, 204-227, 241-246.)

1. Claim 30

a. “A cellular phone comprising:”

To the extent the preamble of this claim is construed to be limiting, Nam

discloses this limitation for at least the same reasons discussed above for claim

elements 1.a, 1.h-1.i. (See analysis and citations above for claim elements 1.a, 1.h-

1.i; Ex. 1003, ¶204; Ex. 1005, 1:66-67.)

b. “an input interface configured for receiving a multimedia signal appropriate for displaying a multimedia content on the cellular phone, wherein the multimedia signal is a compressed digital signal;”

Nam discloses this limitation for at least the same reasons discussed above

for claim element 1.b. (See analysis and citations above for claim element 1.b; Ex.

1003, ¶205; Ex. 1005, Fig. 1, 2:31-37, 2:50-3:2.) For example, as discussed for


39

claim 1.b, Nam discloses transceiver 118 is configured to transmit and receive

wireless signals, such as images/video, sound, and/or data (Ex. 1005, 2:50-63) and

that the multimedia signal is a compressed signal appropriate for display on the

cellular phone’s display 104 (Ex. 1005, 3:10-20, Fig. 1). (See also analysis above

for claim element 1.b.)

c. “at least one processing unit configured for processing the multimedia signal,”

d. “wherein said processing the multimedia signal comprises decompressing the compressed digital signal to a decompressed digital signal,”

e. “wherein said processing the multimedia signal further comprises encoding the decompressed digital signal to produce an encoded digital signal, and

f. wherein the encoded digital signal comprises a decompressed high definition digital video signal; and”

Nam discloses these limitations for at least the same reasons discussed above

for claim elements 1.c-1.f. (See analysis and citations above for claim elements

1.c-1.f; Ex. 1003, ¶206.)

g. “a high definition digital output interface configured for providing the encoded digital signal for transmission to a high definition digital television;”

As explained above for claim elements 1.f-1.g, the combined system of Nam

and Seaman discloses implementing an HD output interface on mobile device 100

for transmitting the decompressed and converted (encoded) signal to external

display 120. (See analysis and discussion above for claim elements 1.f-1.g; Ex.


40

1003, ¶207.) Also, as explained above, the combined Nam and Seaman system

would be configured such that the HD digital output interface would communicate

HD video signals from display interface 102. (Id.) Further explained above for

claim elements 1.f-1.g, it would have been obvious to implement such an HD

interface with the Nam system to provide HD video content for display on HD

televisions. (Ex. 1003, ¶207.). Thus, for reasons similar to those discussed above

for claim elements 1.f-1.g, one of ordinary skill in the art would have been

motivated to configure the combined Nam and Seaman system to include an HD

television for external display 120 to receive the HD signals transmitted by the HD

output interface implemented in the combined system. (Id.) Indeed, given the

disclosure of Seaman¸ which discloses providing HD signals to an external display

in an arrangement similar to that disclosed by Nam (Ex. 1015, Fig. 1, ¶¶12, 47; Ex.

1005, Fig. 1, 3:64-4:9, 4:28-43), one of ordinary skill in the art would have had

reason to use an HD television in the above combined system to provide enhanced

viewability of the multimedia content provided by the modified Nam system. (Ex.

1003, ¶207.)

As explained, one of ordinary skill in the art would have realized that using

an HD television would have been a predictable and common sense

implementation that was within the capabilities of such a person at the time of the

alleged invention. (Ex. 1003, ¶207.) KSR, 550 U.S. at 417. Indeed, such a person


41

would have known to use whatever technologies that were available and

appropriate to better facilitate display of multimedia content on external display

120, such as using an HD television to receive HD video signals from a digital

video source. Such a skilled person would have been able to implement such a

modification without undue experimentation to achieve the predictable result of

displaying multimedia content in a user-friendly way, as there would have been a

natural motivation to support as many output video formats as possible in Nam’s

system. (Ex. 1003, ¶207.)

h. “wherein the cellular phone is configured for receiving power from the high definition digital television through the high definition digital output interface.”

The combination of Nam, Seaman, and Takeda discloses these limitations.

As explained above, the combined Nam and Seaman system discloses that the

converted (encoded) multimedia signal is provided to an HD television via an HD

digital output interface on mobile device 100. (See analysis and citations above for

claim elements 1.f-1.g, 30.f-30.g, Ex. 1003, ¶208.) Although the combined Nam

and Seaman system does not expressly disclose receiving power from the HD

television through the HD digital output interface, one skilled in the art would have

been motivated to provide such features given the disclosure of Takeda. (Ex. 1003,

¶¶208-209.)


42

Takeda discloses a display processing system including a portable phone 20,

a conversion adaptor 40, a controller 50 (e.g., game controller), and a TV monitor

60 that can be configured in various way to display multimedia content on external

monitor 60. (See, e.g., Ex. 1006, Abstract, 5:41-61, Figs. 1, 2, 7-9.) When the

portable phone is connected to the conversion adaptor, the images displayed on the

portable phone can also be displayed on external monitor 60. (Id., 2:19-23, 8:60-

67.) Takeda describes that the conversion adapter includes a converter portion 40b

and recharging portion 40a that may be configured in various ways to operate as an

intermediate device that converts image data for display by external display 60. For

example, Takeda explains that converter 40b includes circuitry that converts image

display data provided by phone 20 to a video signal and outputs it to television

monitor 60. (Id., Fig. 2, 7:53-63.) (See also Ex. 1003, ¶181.)

Takeda further discloses a configuration where an intermediate device may

be configured to provide power from a digital display terminal (such as a digital

TV) to the mobile device. (See, e.g., Ex. 1006, Figs. 8-9, 12:13-18, 12:27-28.)

Regarding this configuration, Takeda explains that “FIG. 9 is a conceptual diagram

showing signal flow in the embodiment of FIG. 8. When the portable phone 20 is

attached to the recharger 40a, power is supplied from an outlet connected to the

television monitor 60 to the rechargeable battery 24 of the portable phone 20 via

the supply circuit 43 included in the recharger 40a.” (Id., 12:13-18.)


43

(Ex. 1006, Figs. 8, 9.) (Ex. 1003, ¶186.)

Specifically, Takeda discloses that the television monitor may provide

power to both the mobile device and the intermediate device (in this embodiment

conversion adaptor 40 is recharger 40a and video signal converter 40b) where the

processing is collectively performed. (Ex. 1006, Figs. 8-9, 12:13-18, 12:27-28; Ex.

1003, ¶187.)10 While the configuration of Figs. 8-9 separate the power supply

10 Takeda explains that the “embodiment of FIG. 8 is so structured that the

television monitor 60 incorporates a circuitry of the video signal converter 40b

included in the conversion adaptor 40 of the embodiment in Figs. 1 and 2. Further,

the recharger 40a is externally attached on the upper end of the side of the

television monitor 60, and the controller 50 is connected to the television monitor

60.” (Ex. 1006, 12:1-7.) While this embodiment separates the interface 40a and the


44

portion of adapter 40 (part 40a) from the features of converter portion 40b, which

are in the television 60 (Ex. 1006, 12:1-14, Figs. 8-9), Takeda still discloses that it

was known prior to the alleged invention to configure such a system to supply

power from an external display (e.g., 60) to components that perform processing of

video signal converter 40b, which are contained in one unit as conversion adaptor

40 in Figures 1 and 2 (see id., 5:61-63 (“The internal circuit of the conversion

adaptor 40 will be described later in detail, by referring to FIG. 2.”), Fig 2

(showing the recharger 40a and the video signal converter 40b in one unit as

conversion adaptor 40)), it does not change the fact that Takeda discloses that the

portable phone sends video signals and receives power though the

connector/contact when it is attached to the adaptor as shown in Figure 9 and the

accompanying explanations as discussed above. (See id., Fig. 9, 12:13-28, Figs. 1,

2, 8, 9.) (Ex. 1003, ¶188.) Also, the fact that all of Figures 1, 2, 8, and 9 show the

same portable phone 20, Figures 2 and 9 show element 40a provides an interface

for the same data and power lines to the phone and the display, and that recharger

40a and the video signal converter 40b appear both in Figures 2 and 9, support the

understanding that the embodiments shown in Figures 1, 2, 8, and 9 concern the

same portable phone and the same components and functionality relating to

recharger 40a and video signal converter 40b. (Ex. 1003, ¶188.)


45

video signals associated with a portable phone and separate device. (Ex. 1003,

¶189.)

Given the disclosures of Nam, Seaman, and Takeda, it would have been

obvious to configure the HD output interface in the combined system of Nam and

Seaman (as discussed above) to receive power from the HD television, so that the

mobile device can conserve power resources when processing video signals as

discussed above. (Ex. 1003, ¶209.) One skilled in the art would have been

motivated to implement such features given the teachings of Takeda in view of

those of Nam and Seaman, along with the knowledge of such a person in the art at

the time of the alleged invention. (Id.) Indeed, as discussed, Takeda discloses it

was known to interconnect a mobile device with external devices and through an

interface to receive power from an external display device to address resource

issues of portable phones. (Ex. 1006, Figs. 1, 2, 8-9, 1:66-2:5, 3:8-20, 6:43-50,

7:15-33, 8:40-59; Ex. 1003, ¶209.) Nam also discloses that the configuration of its

mobile device can vary to accommodate different characteristics and features of

the device. (Ex. 1005, 3:33-54.)

Accordingly, one skilled in the art would have been motivated to configure

the combined Nam and Seaman system to implement the power features of Takeda.

It would have been a predictable implementation within the capabilities of such a

person to implement an HD output interface with the mobile device in the


46

combined system of Nam and Seaman to receive power from the external display

(HD television based on Seaman), through an intermediate device, like that

described by Takeda. (Ex. 1003, ¶210.) Thus, in the modified system, power from

the HD television external display 120 would be provided to the mobile device 100

for providing an alternative power source when processing the video signals in

accordance with Nam’s disclosure. (Ex. 1003, ¶210.) One skilled in the art would

have realized that the functionality of the combined system to provide encoded

video signals to an external HD display device would not have been affected by

such an implementation, and realized such a modification would have been a

predictable and common sense implementation that was within the capabilities of

such a person at the time of the alleged invention. (Ex. 1003, ¶210.) KSR, 550 U.S.

at 417. Allowing the power to be received by the HD interface that is supplied

from the HD display device of the Nam-Seaman combined system would have

been an obvious configuration given the disclosures of Takeda. (Ex. 1003, ¶210.)

Indeed, as explained by Takeda, the features associated with the configurations of

Figs. 8-9 would operate in similar fashion as that for other configurations to allow

video signals received by a phone to be converted and displayed on an external

display, while allowing the phone to receive power during processing of such

signals. (Ex. 1003, ¶¶190, 210.)


47

2. Claim 31

a. “The cellular phone of claim 30, wherein the encoded digital signal is transmitted to the high definition digital television through a wired connection; and,”

As explained above for claim elements 1.f-1.g and 30.g, the combination of

Nam and Seaman disclose that the encoded signal is transmitted through the HD

output interface in the combined system. (See analysis and citations above for

claims 1.f-1.g, 30.g; Ex. 1003, ¶211.) Also as explained for claim element 30.g,

one skilled in the art would have been motivated to configure the combined Nam

and Seaman system such that the HD digital output interface would communicate

HD video signals from display interface 102 for display on HD televisions. (See

analysis and discussion above for claim element 30.g; Ex. 1003, ¶211.) Thus, for

reasons similar to those discussed above for claim elements 1.f-1.g and 30.g, one

of ordinary skill in the art would have been motivated to configure the combined

Nam, Seaman, and Takeda system (as discussed above for claim 30) to transmit the

video signals from the HD output interface to the HD television external display

120 to ensure the HD content is able to be viewed on a larger screen, as sought by

the systems of Nam, Seaman, and Takeda. (Ex. 1003, ¶211.)

Nam, Seaman, and Takeda each discloses interconnecting video signal

source devices to external displays. (Ex. 1005, Fig. 1, 3:64-4:9; Ex. 1006, Figs. 1-

2, 7, 8-9; Ex.1015, Figs. 1-3.) Given this and the disclosures discussed above, it


48

would have been obvious to use a wired connection to transport the HD signals to

the HD television in the above discussed combined Nam, Seaman, and Takeda

system. One skilled in the art would have been motivated to do so given that Nam

discloses a connection between mobile device 100 and external display 100 to

transmit signals compatible with display formats known to incorporate cables for

connecting to an external display, such as S-video, digital video formats, etc. (Ex.

1005, 3:64-4:9; 1003, ¶212) and that systems to communicate high definition

digital signals (like that disclosed by Seaman) were known. (Ex. 1003, ¶212.)

Given such knowledge in the art and the disclosure of Nam, Seaman, and

Takeda, one of ordinary skill at the time of the alleged invention would have been

motivated to use a wired connection to interconnect mobile device 100 to the HD

television to provide a common way of connecting such devices for its intended

purpose (e.g., providing HD video signals for display on the HD television). (Ex.

1003, ¶213.) One skilled in the art would have also realized that the functionality

of the combined system would not be affected by such an implementation, and thus

recognized that the modification would have been a predictable and common sense

implementation that was within the capabilities of such a person at the time of the

alleged invention. (Ex. 1003, ¶213.) KSR, 550 U.S. at 417.

b. “wherein the cellular phone is configured to accommodate displaying the multimedia content on a display screen of the cellular phone.


49

Nam discloses this limitation as discussed above with respect to claim

element 1.b. (See analysis and citations above for claim element 1.b; Ex. 1003,

¶214; Ex. 1005, Fig. 1, 2:31-37, 2:50-3:2.)

3. Claim 32

a. “The cellular phone of claim 30 comprises a decoder, wherein the decoder is configured for performing said decompressing the compressed digital signal to the decompressed digital signal, and wherein the decompressed digital signal is appropriate for the cellular phone to accommodate displaying the multimedia content on a display screen of the cellular phone; and”

As discussed above for claim elements 1.c-1.d, Nam discloses a decoder that

decompresses a compressed digital signal to a decompressed digital video signal,

which is then sent to display interface 102. (See analysis and discussion of claim

elements 1.c-1.d; Ex. 1003, ¶215.) As explained, processing unit 106 is configured

to decompress the video signals received by transceiver 118 and baseband unit

116. (Id.) Nam explains that processing unit 106 can include “decoders.” (Ex.

1005, 3:17-19.) It was well known in the art prior to the alleged invention of the

’451 patent that a decoder was a commonly used technology to provide

decompression functionalities for image and video processing. (Ex. 1003, ¶216.)

Thus, for reasons like that discussed above for claim element 1.d, it would have

been obvious to one skilled in the art at the time of the alleged invention to

configure the decoders of processing unit 106 to perform decompression

operations so that mobile device 100 can adequately decompress received


50

compressed video signals for subsequent conversion for use by external display

120, like that disclosed by Nam. (See analysis and discussion of this feature above

for claim element 1.d.; Ex. 1003; ¶216.) KSR, 550 U.S. at 417.

Further, given Nam explains that “processing unit 106 decompresses the

input signals, transmits the decompressed input signals to the display interface 102,

the decompressed input signals are conditioned into signals compatible with the

display 104, and are transmitted to the display 104 for presentation” (Ex. 1005,

3:10-17), the decompressed digital signal disclosed by Nam and implemented in

the combined Nam, Seaman, and Takeda system is appropriate for the cellular

phone to accommodate displaying the multimedia content on a display screen of

the cellular phone. (See analysis and citations above for claim element 1.b; Ex.

1003, ¶217.)

b. “wherein the cellular phone further comprises an encoder, wherein the encoder is configured for performing said encoding the decompressed digital signal to produce the encoded digital signal for transmission to the high definition digital television.”

As discussed above for claim elements 1.c, 1.e-1.g, and 30.g, Nam discloses

that the processing of the video signal comprises encoding the decompressed

digital signal to produce an encoded signal for transmission to the high definition

digital television. (See analysis and citations above for claim elements 1.c, 1.e-1.g,

30.g; Ex. 1003, ¶218.) While Nam does not explicitly disclose an encoder that is

configured to encode the decompressed digital signal to produce the encoded


51

signal for transmission, it would have been obvious to one skilled in the art at the

time of the alleged invention to configure display interface 102 to include an

encoder to perform the converting operations disclosed by Nam. Such a skilled

person would have been motivated to implement such features given that the use of

an encoder to convert digital display signals to a display format for display devices

was well known prior to the alleged invention of the ’451 patent and that Nam

discloses that display interface 102 performs the same functions as such an encoder

(e.g., converting digital signals to a format compatible for external display 120).

(Ex. 1003, ¶218.) (See also Ex. 1015, ¶¶31, 47, 62 (describing a system with a

transceiver that receives data streams with an encoder 151 (codec) that converts

received multimedia signals to coded video data streams for display by an external

display and identifying types of encoding similar to those taught by Nam (e.g.,

NTSC, PAL, S-video, etc.).)

Given the knowledge of one skilled in the art at the time of the alleged

invention and the disclosure of Nam, one of such skill would have found it a

common sense and predictable implementation to configure display interface 102

with an encoder to perform the converting functionalities described above. (See

analysis and discussion of Nam above for claim elements 1.c, 1.e-1.g; Ex. 1003,

¶219.) KSR, 550 U.S. at 417. Such a skilled person would have found using known

technologies (e.g., encoders) to perform operations known for such technologies


52

(e.g., converting signals to a format for use by display devices) to be a predictable

design choice in the way display interface 102 would perform the functions

disclosed by Nam, and well within the capabilities of such a person at the time of

the alleged invention. (Ex. 1003, ¶219.) Moreover, the combined system of Nam,

Seaman, and Takeda discloses that the encoded signal is provided to the HD

television for the same reasons set forth above. (See analysis and discussion above

for claim element 30.g; Ex. 1003, ¶219.)

4. Claim 33

a. “The cellular phone of claim 32, wherein the decoder and encoder are in separate chips.

As discussed above in claim 32, the combined system of Nam, Seaman, and

Takeda discloses a decoder and an encoder. (See analysis and discussion above for

claim 32; Ex. 1003, ¶220.) While the above discussed combined system does not

explicitly discloses a decoder and encoder in separate chips, it would have been

obvious to one skilled in the art at the time of the alleged invention to configure the

system such that the decoder aspects of processing unit 106 and the encoder

aspects of display interface 102 are on separate chips because doing so would have

been a predictable design choice in the way the internal components of mobile

device 100 would be configured, and would not detract from the system’s ability to

provide video signals for display on an external display device. (Ex. 1003, ¶220.)


53

One of ordinary skill in the art would have been motivated to configure

mobile device 100 in such a way given that Nam discloses processing unit 106 and

display interface 102 as separate components, and explains that the configuration

of the components of mobile device 100 can vary in the use of chips and

arrangements. (Ex. 1005, 3:40-56.) Given this disclosure, and the knowledge by

one skilled in the art that implementing circuitry on separate chips was a known

design characteristic in computing systems like those disclosed by Nam, Seaman,

and Takeda, one of ordinary skill in the art would have had reason to separate the

encoder and decoder functionalities discussed above in separate chips, and

moreover, such a configuration would have been within the realm of knowledge of

such a person at the time of the alleged invention. (Ex. 1003, ¶221.) See also KSR,

550 U.S. at 417.

5. Claim 34

a. “The cellular phone of claim 32, wherein the compressed digital signal is in a video compression format.”

The combination of Nam and Seaman, as discussed above in claims 30 and

32, discloses that the compressed digital signal received by mobile device 100 is in

a video compression format. (See analysis and discussion above for claims 1, 30,

32; Ex. 1003, ¶222.) For example, as explained for claim elements 1.b and 30.b,

Nam discloses decompressing the signal received by processing unit 106, which

necessarily is originally compressed. (Id., Ex. 1005, 3:10-16.) Nam also discloses


54

the use of MPEG compression schemes, which is an image/video compression

format. (Ex. 1005, 3:4-10.) Moreover, Seaman discloses “a small dedicated

device” that is “capable of delivering a video on demand feed to the input of a TV”

by connecting it to the TV, capable of processing compression formats “such as

MPEG-2, MPEG-3, MPEG-4 etc.,” and output signals in encoded format such as

“NTSC, PAL, SECAM, HDTV, SDTV, RGB, YcbCr, YpbPr, S-Video, CVBS,

SDI, HDMI, and DVI.” (Ex. 1015, ¶¶11-12, 23, 25, 31, 37, 47 (emphasis added),

62, claim 7, Figs. 1-3.) (emphasis added) (Ex. 1003, ¶222.). Accordingly, it would

have been obvious to one skilled in the art at the time of the alleged invention to

configure the combined Nam, Seaman, and Takeda system discussed above to

receive at mobile device 100 MPEG formatted multimedia signals that are

decompressed by processing unit 106, as described by Nam. One skilled in the art

would have been motivated to implement such features because as noted by Nam

and Seaman, MPEG was a known compression format used to transmit video

signals to conserve resources in the transmission of such information. (See also Ex.

1003, ¶222.) Given that Nam and Seaman disclose the use of such video

compression formats, and that Nam discloses decompressing the signals received

by transceiver 118, one skilled in the art would have found it a predictable and

common sense approach to use video compression formats when sending digital

video signals to mobile device 100 over the wireless network. (Ex. 1003, ¶222.)


55

KSR, 550 U.S. at 417. Doing so would have been within the knowledge and

capabilities of one skilled in the art, who would have been motivated to use known

technologies to provide the operations of receiving, converting, and displaying

video signals on alternate display devices, like that disclosed by Nam, Seaman, and

Takeda. (Id.)

6. Claim 40

a. “The cellular phone of claim 32, wherein said processing comprises setting a signal power level for the encoded digital signal for said transmission.”

Nam discloses that the processing comprises setting a signal power level for

the encoded digital signal for transmission. As discussed above, Nam’s display

interface 102 converts or encodes the decompressed video signal that is appropriate

for mobile device 100 to a display format compatible with external display 120.

(See analysis and citations for claim elements 1.c-1.d, 30.c-d); Ex. 1005, 4:4-9,

4:28-32, 4:36-40; Ex. 1003, ¶223.)

The encoded digital signal produced by display interface 102 comprises

setting a signal power level to accommodate transmission of the encoded digital

signal to external display 120 because the encoded digital signal is in a format that

can be displayed on televisions, such as NTSC and PAL or otherwise is in a

“format compatible with standard TVs [and] monitors.” (Ex. 1005, 4:28-43; Ex.

1003, ¶224.) Given the display format is compatible with, and thus able to be


56

displayed on external display 120, its power level must be set to accommodate

transmission of the converted video signal to the external display 120. (Ex. 1003,

¶224.) As such, the converted signal provided to external display 120 comprises a

signal power level that is appropriate for that display terminal. (Id.)

This understanding is consistent with how the district court assessed prior art

that disclosed power level features recited in the ’492 parent patent. (Ex. 1009, 30.)

It is also consistent with the understanding of similar features represented during

prosecution of the ’341 application that issued as the ’492 patent. There, in attempt

to distinguish prior art, the applicant explained that similar features (e.g., a power

level appropriate to drive the alternative display) meant that no further

amplification or conversion of the signal is needed to meet the requirements of the

alternative display terminal. (Ex. 1002, 155.) Indeed, the applicant stated “where

the alternative display is a television set, the converted video signal is provided to

standard inputs of the television set in a format and power level that are

appropriate to the television set without requiring further conversion.” (Id.) (Ex.

1003, ¶225.)

In the modified system of Nam (in combination with Seaman and Takeda),

the encoded digital signal comprises a power level to accommodate transmission of

the encoded digital signal because in Nam, “display interface 102 is . . . adapted to

convert the images and/or motion video produced by the image/video processing


57

unit 106 into one of any of a variety of output formats, such as NTSC, PAL, or

digital video” and/or a “format compatible with standard TVs [and] monitors.”

(Ex. 1005, 4:28-43; Abstract (“The external display is not required to specially

process the output signals from the mobile device.”); Ex. 1003, ¶226.) As

explained, the combined system discloses that external display is a television (e.g.,

HD television based on Seaman), and thus, the encoded digital signal provided by

display interface 102 would have been provided to standard inputs of the television

in a format and power level that are appropriate to the television set without

requiring further conversion. (See, e.g., Ex. 1005, 3:66-4:9, 4:28-43; Ex. 1003,

¶226.)

Accordingly, one skilled in the art would have found it obvious to set the

power level for the video signal when it was converted (encoded) for appropriate

use by the type of display device receiving the encoded video signal. One skilled in

the art would have been motivated to implement this feature based on the above

disclosures of Nam, and the understanding that for the external display 120 to

present the received video signals, the signals would have been converted in a

format and power level appropriate for such display. (Ex. 1003, ¶227.)


58

D. Ground 3 Nam, Seaman, and Reynolds Render Claims 20 and 21 Obvious

As explained below, the combination of Nam, Seaman, and Reynolds

discloses each of the limitations of claims 20 and 21 and renders the claims

obvious. (Ex. 1003, ¶¶112-113, 122-127, 233-246.)

1. Claim 20

a. “The apparatus of claim 1, wherein a maximum throughput rate for the encoded digital signal is at least 10 Gigabits/second.”

2. Claim 21

a. “The apparatus of claim 20, wherein the maximum throughput rate supports said transmission of the encoded digital signal in real time.”

As explained above for claims 1, the combined system of Nam and Seaman

discloses the limitations of claim 1. (See analysis and discussion above for claim 1;

Ex. 1003, ¶234.) Also as discussed above for claim 20 in Part IX.B.2, under the

interpretation that the limitations of claim 20 encompasses a throughput rate for the

encoded digital signal that is 10 Gigabits/second or less (see Part VIII), the

combined system of Nam and Seaman discloses such features. (See analysis and

discussion above for claim 20 in Part IX.B.2; Ex. 1003, ¶234.) Moreover, as

discussed above for claim 21, the combined system of Nam and Seaman discloses

that the throughput rate under that interpretation supports real time transmission of

the encoded signal. (See analysis and discussion above for claim 21 in Part IX.B.3;

Ex. 1003, ¶234.)


59

However, under the interpretation that the limitations of claim 20

encompasses that the throughput rate for the encoded digital signal is 10

Gigabits/second or more (see Part VIII), the combination of Nam, Seaman and

Reynolds discloses such features and renders claims 20 and 21 obvious. That is,

while the combined system of Nam and Seaman do not disclose that the maximum

throughput rate for transmitting the encoded digital signal is at least 10

Gigabits/second (i.e., 10 Gigabits/second or higher), one skilled in the art at the

time of the alleged invention would have found it obvious to configure the

combined system to accommodate such capabilities given it was well-known prior

to the alleged invention of the ’451 patent that throughput rates of 10

Gigabits/second or higher could be achieved to transmit multimedia signals, as

disclosed and/or suggested by Reynolds. (Ex. 1003, ¶235.)

Reynolds discloses a system for streaming multimedia signals that is

configured to compress and decompress the signals as they are streamed from a

source media to a destination device. (Ex. 1023, Abstract, 1:28-53.) Reynolds

explains that the use of video codecs for compressing and decompressing

multimedia signals was known. (id., 5:8-8:4.) Indeed, Reynolds explains that


60

streaming multimedia content to cell phones and PDAs was known (id., 7:5-19)11,

and transcoders for providing intercommunication between format-specific

encoding systems to convert one media format into another was also known in the

prior art (id., 12:59-13:29). Reynolds provides background on conventional video

display terminals, including HD televisions (id., 22:46-24:41), and wireless

communications and mobile devices (id., 28:17-32:48). Reynolds discloses that

aspects of its described invention include streaming media signals to a wide variety

of destination devices via a receiver, which can deliver the signals to existing

televisions. (Id. 51:37-56.) Reynolds also discloses the characteristics of known

video formats and related technologies for communicating multimedia to a

destination device. (Id., 14:20-16:67.) Reynolds discloses the data rates of certain

known technologies, including optical fiber network technologies that could

achieve a throughput rate of 10 Gigabits/second or higher. (Id., 15-16, Table 1

(OC-192/STM-64 (10 Gb/s), OC-256 (13.271 Gb/s)).) (Ex. 1003, ¶¶236-237.)

One of ordinary skill in the art at the time of the alleged invention for the

’451 patent would have understood the many applications of various network

standards and communications protocols, like those discussed by Reynolds, and

11 Reynolds incorporates by reference WO9731445 (Ex. 1024) and WO9910836

(Ex. 1025) in their entirety, and thus are included in the disclosure of Reynolds.


61

thus would have understood that high-speed networks, like OC-256, OC-192/STM-

64 optical networks, or fast Ethernet networks, could have been used to

interconnect multimedia source device and a destination device where speed was

of the upmost importance. (Ex. 1003, ¶238) For example, it would have been

known and obvious to one of skill in the art to rely on optical networks like those

disclosed by Reynolds, to provide high speed multimedia streaming or real time

video content display functionalities to accommodate a user’s application needs.

(Ex. 1003, ¶238.)

Based on the disclosures of Reynolds, Nam, and Seaman, along with the

knowledge of the art by one of ordinary skill at the time of the alleged invention,

such a skilled artisan would have been motivated to configure the combined Nam

and Seaman system, as described above for claim 1, to connect the mobile device

(directly or indirectly via an interface module or the like) to external display 120

over a high speed network and configure the interface of those components to

accommodate the throughput needs of such applications, including those involving

optical networks or other networks (e.g., fast Ethernet, etc.) supporting 10

Gigabits/second or higher throughput rates. (Ex. 1003, ¶239.) Given the need for

faster and better quality content processing and delivery at the time of the alleged

invention (see, e.g., Ex.1003, ¶239; Ex. 1023, 5:8-8:4, 7:5-19, 12:59-13:29, 14:20-

16:67, 22:46-24:41, 28:17-32:48, 51:37-56), one skilled in the art would have had


62

reason to configure the combined Nam and Seaman to accommodate faster

network applications, and would have had the knowledge and capability to modify

the interfaces of the components that transmit the encoded digital signals to the HD

television in the combined system to handle throughput rates of such known high

speed networks, like those described by Reynolds. Moreover, given Seaman

discloses that its receiver (which receives multimedia content) “is capable of

receiving real time video” and that “video can be displayed at the same rate that it

is received.” (Ex. 1015, claim 4), one skilled in the art would have recognized the

need and capability to offer systems that provide digital video signals to an

external display in real time were known prior to the alleged invention and thus

configured combined system to accommodate real time transmission of the

encoded signal. (See analysis and discussion of claim 21 in Part IX.B.3; Ex. 1003,

¶239.)

One of ordinary skill in the art would have understood that implementing

such a modification would have been a common sense and predictable design

change to how the combined Nam and Seaman system would send high definition

signals to external display 120, which would have been within the capabilities of

such a person at the time of the alleged invention. (Ex. 1003, ¶¶239-240.) KSR, 550

U.S. at 417. Indeed, such a skilled person would have known to use whatever

techniques and technologies that were available and appropriate to better facilitate


63

displaying video signals on high definition display devices, and thus done so

without undue experimentation to achieve the predictable results of displaying

multimedia content in a user-friendly way depending on the application. (Ex. 1003,

¶240.)12

12 PO’s litigation expert acknowledged when discussing the ’492 parent patent, that

“[o]ne of ordinary skill in the art would have known that video content could be

converted” and that “[t]he specific conversion techniques of which one of ordinary

skill in the art would be aware would depend on both the video content and the

display device. (Ex. 1022, ¶7.)


64

X. CONCLUSION

For the reasons given above, Petitioner requests inter partes review of the

’451 patent and cancellation of claims 1, 20, 21, 30-34, and 40 of the ’451 patent.

Respectfully submitted,

Dated: February 10, 2017 By: / Joseph E. Palys / Joseph E. Palys Reg. No. 46,508

Counsel for Petitioner


1

CERTIFICATE OF COMPLIANCE

Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing

Petition for Inter Partes Review of U.S. Patent No. 8,903,451 contains, as

measured by the word-processing system used to prepare this paper, 13,576 words.

This word count does not include the items excluded by 37 C.F.R. § 42.24(a).

Respectfully submitted,

Dated: February 10, 2017 By: / Joseph E. Palys /

Joseph E. Palys (Reg. No. 46,508) Counsel for Petitioner


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CERTIFICATE OF SERVICE

I hereby certify that on February 10, 2017, I caused a true and correct copy

of the foregoing Petition for Inter Partes Review of U.S. Patent No. 8,903,451 and

supporting exhibits to be served via express mail on the Patent Owner at the

following correspondence address of record as listed on PAIR:

Virginia Innovation Sciences, Inc. 6301 Eadsall Road, #517 Alexandria, VA 22312

Dated: February 10, 2017 By: / Joseph E. Palys /

Joseph E. Palys (Reg. No. 46,508) Counsel for Petitioner

paper no. filed: february 10, 2017 united states patent ... · petition for inter partes review –...

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