Unified Patents LLC v. KWangwoon University Industry Academic ColLaboration Foundation

1. Case Identification

• Case #: IPR2020-01048
• Patent #: 8,867,854
• Filed: June 9, 2020
• Petitioner(s): Unified Patents, LLC
• Patent Owner(s): Electronics and Telecommunications Research Institute, Kwangwoon University Industry-Academic Collaboration Foundation, and University-Industry Cooperation Group of Kyung Hee University
• Challenged Claims: 1 and 5

2. Patent Overview

• Title: Image Decoding Apparatus and Method
• Brief Description: The ’854 patent discloses a method and apparatus for image decoding used in video compression. The technology focuses on improving efficiency by performing intra-prediction on four adjacent blocks of pixels (a first block, and second, third, and fourth blocks adjacent to its right, bottom, and right-bottom, respectively) using a single, common intra-prediction mode.

3. Grounds for Unpatentability

Ground 1: Obviousness over Han in view of Kim - Claims 1 and 5 are obvious over Han in view of Kim.

• Prior Art Relied Upon: Han (Application # 2008/0175317) and Kim (Application # 2007/0041450).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Han taught an image decoding apparatus that increases compression efficiency by grouping adjacent 4x4 "unit blocks" and decoding them using a single, identical intra-prediction mode. Han’s disclosure of grouping four 4x4 blocks in a 2x2 arrangement and applying one prediction mode met the spatial arrangement and "one intra prediction mode" limitations of claim 1. Han also disclosed that because the prediction mode is applied to the group, the mode information only needs to be decoded once, anticipating claim 5.
  • Motivation to Combine: The combination with Kim was presented as an alternative argument in case the claims were narrowly construed to require a specific temporal processing order (e.g., top-left, then top-right, etc.). Kim taught a prior art "processing order of 4x4 blocks" in a zig-zag scan order, which was a well-known part of the H.264 standard. A Person of Ordinary Skill in the Art (POSITA) would combine Han's efficiency technique with a conventional, well-known processing order like that in Kim to achieve the predictable result of an efficient decoding process with a standard operational sequence.
  • Expectation of Success: A POSITA would have had a high expectation of success in combining these teachings, as it amounted to applying a standard processing order from the H.264 standard to a block-grouping efficiency method also designed for H.264-type systems.

Ground 2: Obviousness over Oguz in view of Yoo - Claim 1 is obvious over Oguz in view of Yoo.

• Prior Art Relied Upon: Oguz (Application # 2008/0152005) and Yoo (Application # 2005/0089094).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Oguz disclosed improving intra-prediction efficiency by identifying a consistent directional structure at a larger scale (an 8x8 subblock) and then applying the same prediction mode to all constituent "4-4x4 subblocks in the same overlapping area." This taught the core concept of claim 1: predicting four adjacent 4x4 blocks using a single, common intra-prediction mode.
  • Motivation to Combine: Similar to the Han/Kim ground, the combination with Yoo was argued for a narrow claim construction requiring a specific temporal processing order. Yoo disclosed a standard "scanning order for 4x4 sub-blocks" from the H.264 standard, which matched the order a narrow construction would require. A POSITA would be motivated to apply the standard scanning order from Yoo to the multi-block prediction scheme of Oguz as a simple, known method to yield predictable results, as both references operated within the same H.264 technical framework.
  • Expectation of Success: A POSITA would have reasonably expected success because the combination involved implementing a known decoding order (from Yoo) with a known prediction-grouping technique (from Oguz), both of which were established in the art of H.264 video coding.

• Additional Grounds: Petitioner asserted additional challenges, including that claims 1 and 5 are anticipated by Han under 35 U.S.C. §102; claim 1 is anticipated by Oguz under §102; and claim 1 is anticipated by or, in the alternative, obvious over Lee (Application # 2006/0018385). These arguments relied on the primary references disclosing all claim limitations without combination.

4. Key Claim Construction Positions

• "first block" / "second block" / "third block" / "fourth block": Petitioner argued that these terms do not impose a temporal order on the performance of the intra-prediction steps. Citing Federal Circuit precedent, Petitioner contended that ordinal numbers like "first" and "second" in an apparatus claim are conventionally used to distinguish different elements, not to mandate a sequence of operations. The petition asserted that neither the claim language nor the specification requires the blocks to be processed in the 1-2-3-4 order recited, only that they are predicted using the same mode. This construction was central to the anticipation grounds and the primary argument for the obviousness grounds.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d) or §314(a).
• §325(d): The petition contended that none of the asserted prior art references (Han, Kim, Oguz, Yoo, Lee) were cited or considered by the examiner during the prosecution of the ’854 patent. Therefore, the arguments presented were entirely new.
• §314(a): The petition stated that the ’854 patent had not been challenged in any prior inter partes review (IPR) and was not involved in any litigation. Accordingly, Petitioner argued that discretionary denial factors, such as those articulated in General Plastic and Fintiv, were inapplicable.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1 and 5 of the ’854 patent as unpatentable.