PTAB

IPR2017-00875

HTC America Inc v. Virginia Innovation Sciences Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Converting Mobile Terminal Multimedia Signals
  • Brief Description: The ’853 patent discloses systems and methods for converting multimedia signals from a mobile terminal into a format suitable for an alternative, external display. The technology aims to overcome the display size limitations of mobile devices.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nam, Seaman, and Takeda - Claims 1-3, 6, 8-10, 12, 14, and 34

  • 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: Petitioner argued that the primary reference, Nam, discloses the core of the invention: a cellular phone that receives a compressed multimedia signal, decompresses it, and encodes (converts) it into a format compatible with an external display. Nam’s system addresses the same problem as the ’853 patent—the diminished user experience from small mobile device screens. However, Nam does not explicitly teach using a high definition (HD) signal or an interface that also receives power. To remedy this, Petitioner asserted that Seaman teaches processing video signals into various encoded formats, including HD formats like HDTV, HDMI, and DVI, for output to a TV. Takeda was introduced to teach a portable phone with an output interface that simultaneously transmits video signals to an external display (e.g., a TV monitor) and receives power from an external source via the same connection, thereby conserving the phone's battery.
    • Motivation to Combine: A POSITA would combine Nam with Seaman to improve the quality of the video output on the external display, a well-known goal at the time. Using HD formats was a known way to achieve better quality. The motivation to further combine this system with Takeda’s teachings stemmed from the desire to conserve battery life on the mobile device during power-intensive operations like decompressing and converting video. Takeda explicitly teaches using an external power source for generating high-resolution images to avoid battery drain. The combination represented the pursuit of predictable solutions to known problems.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved applying known technologies (HD video conversion, power-over-interface) to a known system (Nam's mobile-to-external display) to achieve predictable results (higher quality video and preserved battery life).

Ground 2: Obviousness over Nam, Seaman, Takeda, and Matsubara - Claim 13

  • Prior Art Relied Upon: Nam (Patent 7,480,484), Seaman (Application # 2004/0223614), Takeda (Patent 6,781,635), and Matsubara (European Patent Application # EP 1 175 069 A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination asserted in Ground 1 to address the additional limitation of claim 13, which requires the HD display to be "inside a vehicle." Petitioner argued that the combination of Nam, Seaman, and Takeda teaches all elements of claim 13 except for the in-vehicle location of the display. Matsubara was introduced to supply this missing element, as it explicitly discloses a mobile network adapter system for use "in cars" that connects a mobile phone to an appliance, such as a television, that "might be installed in an automobile, truck, or boat."
    • Motivation to Combine: A POSITA would be motivated to add the teachings of Matsubara to the base combination of Nam, Seaman, and Takeda to increase the system's versatility and allow users to view content on a larger display while traveling. Since all the references are directed to solving the problem of viewing mobile content on larger, alternative displays, applying this technology to an in-vehicle environment was a predictable and logical extension.
    • Expectation of Success: A POSITA would have expected success in this combination because it involved implementing a known system in a known and suitable environment (a vehicle), as taught by Matsubara. This modification would not negatively affect the operation of the base system but would instead complement its application by addressing viewability concerns in a common use case.

4. Key Claim Construction Positions

  • "a maximum throughput rate of at least 2 Gb/s" (Claim 12): Petitioner contended this phrase is ambiguous, as a "maximum" rate that is "at least" a certain value is unclear. It could mean the rate is 2 Gb/s or higher, or that the system supports rates up to and including 2 Gb/s. For the purposes of the petition, Petitioner argued that the prior art, specifically known standards like IEEE 1394b (FireWire 800) which supported rates over 3 Gb/s, rendered the claim obvious under either interpretation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 6, 8-10, 12-14, and 34 of the ’853 patent as unpatentable.