PTAB

IPR2017-00874

HTC America Inc v. Virginia Innovation Sciences Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus and Method for Converting and Supplying Mobile Terminal Multimedia Signal
  • Brief Description: The ’471 patent describes systems and methods for converting multimedia signals intended for a mobile terminal into a format suitable for an alternative, external display. The technology addresses the perceived limitations and "diminished user enjoyment" of small mobile device screens by enabling content to be viewed on larger displays like televisions.

3. Grounds for Unpatentability

Ground 1: Claims 26, 27, and 50 are obvious over Nam in view of Seaman.

  • Prior Art Relied Upon: Nam (Patent 7,480,484) and Seaman (Application # 2004/0223614).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nam disclosed the core functionality required by the claims, including a mobile device that receives a wireless video signal, processes it (e.g., decompresses it), and converts it into a format (e.g., NTSC, PAL, digital video) for output to an external display. However, Nam did not explicitly disclose converting the signal to a high definition (HD) digital signal. Seaman was introduced to supply this missing element, as it taught a device for processing video signals for output in various formats, explicitly including HD formats like HDTV, HDMI, and DVI. The combination of Nam’s system with Seaman’s HD output capabilities allegedly rendered the claims obvious. For dependent claim 26, Petitioner asserted that setting a signal power level is inherent in formatting a signal for a standard display. For claim 27, Seaman’s disclosure of HDMI taught the required high definition multimedia interface.
    • Motivation to Combine: A POSITA would combine Nam and Seaman to improve the functionality of Nam’s system. Modifying Nam’s device to support HD output formats would allow it to work with the growing number of HD displays, thereby improving video quality and user experience. This was argued to be a common-sense modification to increase device compatibility and marketability.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because converting video signals to HD formats was a well-known and conventional practice at the time. Integrating Seaman's known HD output technology into Nam's system would have been a predictable application of existing technologies.

Ground 2: Claims 41 and 43-48 are obvious over Nam, Seaman, and Takeda.

  • Prior Art Relied Upon: Nam (Patent 7,480,484), Seaman (Application # 2004/0223614), and Takeda (Patent 6,781,635).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Nam and Seaman combination by adding Takeda to address limitations related to external power supplies. The challenged claims in this ground require, for example, power from a source other than the mobile terminal's internal battery (claim 41), an intermediate device that provides power (claim 44), or power received from the alternative display terminal itself (claim 45). Petitioner contended that Takeda disclosed a portable phone system with a "conversion adaptor" that could be powered by an external source (e.g., an AC outlet via the display). This external power could be used for processing-intensive tasks, thereby conserving the phone's battery. This adaptor acts as the claimed "intermediate device."
    • Motivation to Combine: A POSITA would be motivated to integrate Takeda's power management solution into the Nam/Seaman system to solve the known problem of high battery consumption when processing and displaying high-resolution video. Preserving battery life while enabling high-quality video output on an external display was a significant design goal, making the combination logical and desirable.
    • Expectation of Success: Using an external power source or an intermediate adapter for power-intensive operations on a mobile device was a known and straightforward engineering solution. A POSITA could have implemented this combination with a high degree of predictability.

Ground 3: Claim 42 is obvious over Nam, Seaman, and Hardacker.

  • Prior Art Relied Upon: Nam (Patent 7,480,484), Seaman (Application # 2004/0223614), and Hardacker (Patent 7,020,121).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claim 42, which required the input video signal received by the mobile terminal's interface to be a high definition digital signal. The primary Nam/Seaman combination focused on producing an HD output. Petitioner argued that Hardacker cured this deficiency by disclosing a wireless communication system specifically designed for transmitting and receiving HD video signals. Hardacker taught using its system with various multimedia sources, such as set-top boxes or laptops, that provide HD signals.
    • Motivation to Combine: A POSITA would have been motivated to modify the Nam/Seaman system to be capable of receiving HD input signals, as taught by Hardacker, to increase the system's versatility. Supporting multiple high-quality input formats, in addition to output formats, would make the device more useful and compatible with a wider range of video sources, which was a well-understood design goal.
    • Expectation of Success: A POSITA would have recognized that configuring a device to receive known HD wireless signals was a predictable design choice involving standard techniques. The successful implementation of such a modification would have been highly probable without undue experimentation.

4. Key Claim Construction Positions

  • "display terminal": Petitioner argued for adopting the construction from a prior IPR involving the ’471 patent, which was "device for video display." This construction was asserted to be consistent with the specification.
  • "convert" / "converting" / "converted": Petitioner also adopted the prior IPR construction of "change." This broad construction was critical to the argument that Nam's processing—which includes decompression and reformatting of signals—falls within the scope of the claims, as it encompasses changes to signal format and decompression of compressed signals.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 26, 27, 41-48, and 50 of the ’471 patent as unpatentable.