Unified Patents LLC v. Dolby Laboratories Licensing Corp

1. Case Identification

• Case #: IPR2021-00275
• Patent #: 10,237,577
• Filed: December 11, 2020
• Petitioner(s): Unified Patents, LLC
• Patent Owner(s): Dolby Laboratories Licensing Corporation
• Challenged Claims: 1, 7, and 8

2. Patent Overview

• Title: Video Decoding Method and Apparatus, and Video Encoding Method and Apparatus
• Brief Description: The ’577 patent discloses methods for video compression, specifically using intra-prediction. The claimed invention involves determining whether to filter predicted pixels adjacent to a prediction block boundary based on the intra-prediction mode, performing the filtering on the prediction block, and then combining the filtered prediction block with a residual block to generate a restored block.

3. Grounds for Unpatentability

Ground 1: Claims 1, 7, and 8 are anticipated by or obvious over Lee

• Prior Art Relied Upon: Lee (Application # 2013/0301720).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lee discloses every limitation of the challenged claims. Specifically, Lee teaches a video decoding/encoding method that generates a prediction block via intra-prediction using neighboring pixels. Lee explicitly describes determining whether to filter, and where to filter, based on the direction of the intra-prediction mode (e.g., vertical or horizontal modes). It then discloses performing filtering on predicted pixels adjacent to the prediction block boundary (e.g., the leftmost vertical pixel line) and subsequently generating a "reconstructed block" (argued to be synonymous with the claimed "restored block") based on the filtered prediction block and a residual block. The obviousness ground asserted that to the extent any minor differences exist, such as the precise definition of a "current block," a person of ordinary skill in the art (POSITA) would have found them to be obvious variations.
  • Motivation to Combine (for §103 grounds): Not applicable for anticipation. For obviousness, Petitioner argued a POSITA would have recognized Lee's teachings as directly applicable and obvious to implement in a standard video coding process.
  • Expectation of Success (for §103 grounds): Petitioner contended that implementing Lee's disclosed filtering methods within a standard video codec would have been straightforward, leading to a high expectation of success.

Ground 2: Claim 8 is obvious over Lee in view of Guo

• Prior Art Relied Upon: Lee (Application # 2013/0301720) and Guo (Application # 2014/0376634).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed the preamble of claim 8, which recites a "non-transitory computer-readable recording medium storing a bitstream." Petitioner asserted that Lee teaches the video encoding method that generates a bitstream. Guo was introduced to explicitly teach storing such an encoded video bitstream on a computer-readable medium, such as a hard drive or non-volatile memory. Petitioner argued the body of claim 8 is met by Lee for the same reasons articulated in Ground 1.
  • Motivation to Combine: A POSITA would combine Lee and Guo because it was a well-known and necessary practice in the art to store the output of a video encoder (like Lee's) on a computer-readable medium (as taught by Guo) for transmission or storage. This combination was presented as applying a known technique (Guo's storage medium) to a similar device (Lee's encoder) to achieve predictable results.
  • Expectation of Success: The combination was argued to be simple and routine for a POSITA, as storing data streams on memory was a fundamental aspect of computing and video processing, ensuring a high expectation of success.

Ground 3: Claims 1, 7, and 8 are anticipated by or obvious over Van-der-Auwera

• Prior Art Relied Upon: Van-der-Auwera (Application # 2013/0114708).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Van-der-Auwera discloses all limitations of the challenged claims. Van-der-Auwera describes a video coding device that determines whether to perform "secondary boundary filtering" on an intra-predicted block. This determination is based on the direction of the intra-prediction mode (e.g., horizontal or vertical), which dictates the location of the secondary boundary to be filtered (e.g., the top-side or left-side boundary). Van-der-Auwera then teaches filtering the predicted block if filtering is enabled and combining the filtered predicted block with the residual block to decode the current block. Petitioner asserted that this combination is inherently a "restored block" as understood by a POSITA.
  • Motivation to Combine (for §103 grounds): Not applicable for anticipation. The obviousness contention was a fallback argument, stating that any perceived distinctions would have been obvious modifications to a POSITA.
  • Expectation of Success (for §103 grounds): Petitioner argued that Van-der-Auwera's teachings were clear and directly applicable to the claimed invention, providing a POSITA with a reasonable expectation of success.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention of the petition was that the ’577 patent is not entitled to its claimed priority dates from earlier applications. Petitioner argued that the parent applications fail the written description requirement of 35 U.S.C. §112 for the challenged claims. Specifically, the priority documents allegedly disclose filtering only on a restored block—that is, after a prediction block and a residual block have been combined. In contrast, the challenged claims recite filtering on the prediction block itself, before it is combined with the residual block. Petitioner asserted this distinction is substantive and that the claimed invention was not disclosed until the application that matured into the ’577 patent was filed. This argument, if successful, establishes the patent's priority date as July 15, 2016, making Lee, Guo, and Van-der-Auwera valid prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial. Under §325(d), denial was argued to be improper because none of the asserted prior art references were previously considered during the examination of the ’577 patent. Petitioner also argued against discretionary denial under §314(a) and the Fintiv factors, stating that the ’577 patent was not involved in any parallel district court litigation, rendering such considerations inapplicable.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 7, and 8 of the ’577 patent as unpatentable.