Unified Patents Inc v. Velos Media LLC

1. Case Identification

• Case #: IPR2019-00720
• Patent #: 9,538,205
• Filed: March 1, 2019
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): Velos Media, LLC
• Challenged Claims: 1-5

2. Patent Overview

• Title: Arithmetic Coding and Decoding for Image Compression
• Brief Description: The ’205 patent relates to arithmetic coding and decoding devices for image data. The technology focuses on deriving a "context index" having one of three different values to improve upon prior art systems that allegedly used only two context groups for grouping sub-blocks during compression.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 are obvious over Ji in view of Kumakura.

• Prior Art Relied Upon: Ji (Application # 2013/0188726) and Kumakura (a 2012 Joint Collaborative Team on Video Coding document, JCTVC-I0296).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ji taught a video coding system that uses three distinct context regions or sets for encoding significant coefficient flags. Kumakura taught a system for deriving context maps by analyzing the significant coefficient flags of adjacent sub-blocks (specifically, the right and lower neighbors). However, when both adjacent neighbors lack a non-zero coefficient, Kumakura’s system applies a diagonal boundary to define only two context groups. The combination of Ji's three-context structure with Kumakura's adjacent-block analysis allegedly rendered the claims obvious.
  • Motivation to Combine: A POSITA would combine Kumakura's efficient adjacent-block analysis with Ji's established three-context region system to improve the accuracy and efficiency of Ji's coding and decoding process. Petitioner asserted that applying Kumakura's technique of using a diagonal boundary to infer coefficient groups was a known method that would yield the predictable result of improved compression efficiency in Ji’s system.
  • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success because the combination was a mere extension of processes already present in the prior art. Ji already considered flags of adjacent sub-blocks, and applying Kumakura's more specific right-and-lower neighbor analysis represented an application of a known technique to a similar system to achieve a predictable improvement.

Ground 2: Claims 1, 2, and 4 are obvious over Kumakura in view of Kung.

• Prior Art Relied Upon: Kumakura (JCTVC-I0296) and Kung (a 2012 Joint Collaborative Team on Video Coding document, JCTVC-I0372).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kumakura disclosed a system using two context regions based on an analysis of adjacent sub-blocks. Kung was directed to a similar system but explicitly used three context regions ("zones") to reduce the number of contexts, thereby decreasing encoding and decoding time with negligible compression loss. The combination of Kumakura's adjacent-block analysis with Kung's three-zone context model allegedly rendered the claims obvious.
  • Motivation to Combine: A POSITA would have been motivated to modify Kumakura's two-region system by incorporating the three-context regions taught by Kung. Kung's disclosure of reduced processing time without significant data loss would have provided a clear reason to apply its teachings to improve the known method of Kumakura.
  • Expectation of Success: The modification would have been straightforward, as both systems used similar diagonal boundaries to define their groups. Petitioner argued that the modification would merely require the addition of Kung's logic to define a third context region, a predictable extension of the method already used in Kumakura.

Ground 3: Claims 3 and 5 are obvious over Kumakura in view of Kung and Ji.

• Prior Art Relied Upon: Kumakura (JCTVC-I0296), Kung (JCTVC-I0372), and Ji (Application # 2013/0188726).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 2 to address the full apparatus claims (3 and 5), which recite additional decoding and coding pipeline elements. Petitioner argued that the combination of Kumakura and Kung provided the core invention—a three-context quantization scheme based on adjacent block analysis. Ji was relied upon for its express disclosure of the conventional pipeline components needed to create a complete apparatus, such as an "inverse frequency transform unit" (claim 3) and a "transform coefficient generating unit" (claim 5).
  • Motivation to Combine: A POSITA, seeking to build a complete device, would have been motivated to implement the improved quantization scheme from the Kumakura/Kung combination within a standard, comprehensive encoding/decoding pipeline as taught by Ji. This would involve integrating known, necessary components to make the core method functional in a complete apparatus.
  • Expectation of Success: Petitioner argued success would be highly predictable, as this combination involved implementing an improved subsystem (the context derivation from Kumakura/Kung) into a well-understood, standard system architecture (the processing pipeline from Ji), which is a routine design choice in the field.

4. Key Claim Construction Positions

• Petitioner argued that the various "unit" limitations in the claims (e.g., "context index deriving unit," "inverse frequency transform unit") should be interpreted under the pre-AIA version of 35 U.S.C. §112, ¶6 as means-plus-function terms.
• For each term, Petitioner proposed that the claimed function is as recited in the claim language itself. The corresponding structure was identified as a CPU operating software that performs the algorithms and steps described in the ’205 patent specification and depicted in its figures (e.g., performing step S248 in Figure 40).

5. Key Technical Contentions (Beyond Claim Construction)

• Prior Art Status of Conference Papers: A significant portion of the petition was dedicated to establishing that Kumakura and Kung, both contributions to a JCT-VC standards meeting, qualify as "printed publications" under §102.
• Petitioner argued these documents were made publicly accessible without restriction on the JCT-VC website prior to the patent's critical date. This argument was supported by a declaration from an expert, Dr. Ajay Luthra, who attested to the public nature and searchability of the JCT-VC document repository during the relevant time frame.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate.
• The core reason asserted was that the primary prior art references, Ji and Kung, were never considered by the Examiner during the original prosecution. Furthermore, while Kumakura was cited in an Information Disclosure Statement, the Examiner never substantively addressed it or applied it in a rejection, meaning the core arguments and combinations in the petition were being considered for the first time.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-5 of the ’205 patent as unpatentable.