Samsung Electronics Co Ltd v. Advanced Coding Technologies LLC

1. Case Identification

• Case #: IPR2024-00327
• Patent #: 9,986,303
• Filed: January 5, 2024
• Petitioner(s): Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.
• Patent Owner(s): Advanced Coding Technologies LLC
• Challenged Claims: 1-2

2. Patent Overview

• Title: Video Image Coding Data Transmitter, Video Image Coding Data Transmission Method, Video Image Coding Data Receiver, and Video Image Coding Data Transmission and Reception System
• Brief Description: The ’303 patent discloses a video transmission technology using a hierarchical coding structure. The system separates video data into a "basic hierarchy" for baseline quality and a "supplementary hierarchy" for enhanced quality. During periods of low network bandwidth, only the basic hierarchy data is transmitted for immediate, lower-quality playback; when bandwidth improves, the supplementary data is transmitted belatedly and combined with the previously received and stored basic data to reconstruct a higher-quality video.

3. Grounds for Unpatentability

Ground 1: Obviousness over Demircin - Claims 1-2 are obvious over Demircin.

• Prior Art Relied Upon: Demircin (Application # 2008/0181302).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Demircin discloses all limitations of claims 1 and 2. Demircin teaches a system using Scalable Video Coding (SVC) that adapts to network conditions by transmitting video in a base layer and one or more enhancement layers. Petitioner mapped Demircin’s "base layer" to the claimed "basic video image coding data" and its "enhancement layer(s)" to the "supplementary video image coding data." Demircin prioritizes base layer data when bandwidth is limited. Critically, Demircin teaches that if a bit budget is insufficient, enhancement layer frames can be temporarily discarded and transmitted later during an "idle interval," directly corresponding to the ’303 patent's concept of delayed transmission. Petitioner asserted Demircin also discloses a supplementary picture whose coding and display order are "earlier by a factor of a group of pictures" (GOP) than a basic picture by showing that an enhancement layer picture for an early frame (e.g., frame 0) has an earlier order than a base layer picture for a much later frame (e.g., frame 5), with the time difference exceeding the GOP size.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference.
  • Expectation of Success (for §103 grounds): Not applicable for a single-reference ground.

Ground 2: Obviousness over Kimoto and Demircin - Claim 1 is obvious over Kimoto in view of Demircin.

• Prior Art Relied Upon: Kimoto (Application # 2011/0211631) and Demircin (Application # 2008/0181302).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Kimoto teaches the core concept of the ’303 patent but lacks a specific disclosure of organizing data into GOPs as claimed. Kimoto describes a system where a user first views low-quality "lower layer data" that is stored on a device. Later, the system transmits only the "upper layer data," which is then synthesized with the stored lower layer data to reconstruct a high-quality video. This maps directly to the claimed method of receiving and storing basic data before receiving supplementary data for reconstruction. However, Petitioner argued Kimoto is silent on the specific GOP structure required by the claims (e.g., "set in units of the group of pictures including an intra coded picture and a plurality of inter prediction coded pictures"). Demircin was argued to supply this missing element by teaching the use of a standard GOP structure (with I-frames and B-frames) in the context of a multi-layer, scalable video coding system.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Demircin's GOP structure with Kimoto’s system to implement Kimoto's high-level concept efficiently and predictably. Using GOPs was a well-known, standard practice for managing hierarchical video streams. A POSITA would have recognized that applying Demircin’s GOP structure would solve the practical problem of how to align Kimoto's stored lower-layer data with the newly received upper-layer data for synthesis and would also support features like random access for delayed playback.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as applying a standard GOP structure to a hierarchical video coding scheme was a common and well-understood technique at the time, and both references operate in the same field of scalable video coding.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and §314(a).
• §325(d): Petitioner asserted that the primary references, Demircin and Kimoto, are new and were never considered by the examiner during the original prosecution of the ’303 patent. Petitioner noted that the Demircin reference it relies on is materially different from another reference by the same inventor that the examiner had previously cited.
• Fintiv (§314(a)): To avoid denial based on parallel district court litigation, Petitioner stated that it has presented a Sotera stipulation to the Patent Owner, thereby agreeing not to pursue the same invalidity grounds in the district court. Petitioner argued this stipulation eliminates the risk of duplicative efforts and, per recent USPTO guidance, warrants that the petition should not be discretionarily denied.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-2 of the ’303 patent as unpatentable under 35 U.S.C. §103.