Canon Inc v. WSOU Investments LLC

1. Case Identification

• Case #: IPR2021-00965
• Patent #: 7,116,714
• Filed: May 17, 2021
• Petitioner(s): Canon, Inc. and Canon U.S.A., Inc.
• Patent Owner(s): WSOU Investments, LLC d/b/a Brazos Licensing and Development
• Challenged Claims: 1-9, 12, 13, 16, 18-34, 36, 37

2. Patent Overview

• Title: Video Coding
• Brief Description: The ’714 patent describes video encoding systems and methods that redundantly encode a video picture as both an INTRA frame (using only spatial compression) and an INTER frame (using temporal prediction from other pictures). This dual-coding technique is intended to improve error resilience in video transmission.

3. Grounds for Unpatentability

Ground 1: Obviousness over Färber and Dalby - Claims 1-3, 5-9, 12, 13, 16, 18-34, 36 are obvious over Färber in view of Dalby.

• Prior Art Relied Upon: Färber (a 1996 conference paper titled “Robust H.263 Compatible Transmission for Mobile Video Server Access”) and Dalby (WO 1998026604A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Färber and Dalby taught all limitations of the challenged claims. Färber disclosed a system to improve video transmission robustness by encoding video into two separate data streams: an INTER-coded P-stream for normal transmission and a redundantly coded INTRA I-stream for error recovery. When a decoder signaled an error, the server would substitute a P-frame with its corresponding I-frame. Dalby expressly cited and adopted Färber's two-stream approach to further address mismatch errors between reconstructed P-frames and their corresponding I-frames. Petitioner asserted this combination directly taught the core inventive concept: encoding a single picture using a first, non-referential mode (INTRA) and a second, temporally predicted mode (INTER).
  • Motivation to Combine: A POSITA would combine these references because Dalby explicitly identified, cited, and proposed enhancements to Färber's system. Both references addressed the same problem of improving video stream robustness against transmission errors and were compliant with the H.263 standard, making their combination a predictable and logical step for a skilled artisan.
  • Expectation of Success: Given that Dalby was a direct extension of Färber's concepts and both operated within well-established video coding standards, a POSITA would have had a high expectation of successfully combining their teachings.

Ground 2: Obviousness over Färber, Dalby, and Morishita - Claims 4, 5, 12, 21, 23, 24, 29, 31-33, and 37 are obvious over Färber and Dalby in further view of Morishita.

• Prior Art Relied Upon: Färber, Dalby, and Morishita (Japanese Application # H11-27645).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground augmented the Färber/Dalby combination with teachings from Morishita to address claims with additional limitations. Petitioner contended that Morishita taught the use of B-pictures (bidirectionally predicted frames) as an advantageous and well-known technique, which would render obvious claims requiring backward prediction or reference to a subsequent picture (e.g., claims 4, 21, 23). Furthermore, Morishita disclosed an adaptive coding scheme where the frequency of I-pictures in a video stream is increased in response to feedback (retransmission requests) from the decoder. Petitioner argued this teaching made it obvious to add feedback-based control to the Färber/Dalby system, thereby disclosing limitations related to controller-determined encoding based on a decoder signal (e.g., claim 24).
  • Motivation to Combine: A POSITA seeking to improve the compression efficiency and error resilience of the Färber/Dalby system would be motivated to incorporate Morishita's teachings. Adding B-frames was a known method for improving compression, and employing an adaptive, feedback-driven error control scheme was a logical enhancement to a system already designed for robustness.
  • Expectation of Success: All three references operated within the standard MPEG/H.263 environment, ensuring their respective techniques for frame prediction and error control were compatible and could be combined predictably.

Ground 3: Obviousness over Shinoda and Morishita - Claims 1-9, 12, 13, 16, 18-24, 26-32, and 36 are obvious over Shinoda in view of Morishita.

• Prior Art Relied Upon: Shinoda (Patent 5,680,322) and Morishita (Japanese Application # H11-27645).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Shinoda taught the core concept of the ’714 patent by explicitly disclosing the dual coding of a single image frame as both an I-picture and a P-picture to improve random access and transmission efficiency. This directly mapped to the primary limitation of encoding a picture using first (INTRA) and second (INTER) encoding modes. The combination with Morishita, as in the ground above, supplied the teaching of dynamically adjusting the encoding strategy (e.g., increasing the number of I-pictures) based on decoder feedback about transmission errors. This combination was argued to render the full scope of many challenged claims obvious.
  • Motivation to Combine: A POSITA would combine Shinoda and Morishita to enhance Shinoda's dual-coding system with a more dynamic and robust error-handling capability. Incorporating Morishita’s feedback-based control would allow the encoder to adapt to changing network conditions, a clear benefit for any transmission system.
  • Expectation of Success: The combination was asserted to be predictable because both references addressed common problems in video compression and transmission using techniques compliant with the MPEG standard.

• Additional Grounds: Petitioner asserted anticipation grounds against various claims based on Färber (Ground 2) and Dalby (Ground 3) individually. Petitioner also asserted obviousness grounds that added Mashimo (Japanese Application # H6-205365) to the primary combinations to teach specific controller and switching functionalities (Grounds 5 and 7).

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that the co-pending district court litigation was in its very early stages, with no claim construction order issued and no trial date set. Petitioner stated it had been diligent in filing the IPR petition less than six months after being served. Finally, Petitioner contended that the asserted grounds were strong and relied on prior art that the patent examiner had not previously considered, weighing against denial and in favor of institution.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9, 12, 13, 16, 18-34, 36, and 37 of the ’714 patent as unpatentable.