Hisense USA Corp v. VideoLabs Inc

1. Case Identification

• Case #: IPR2025-01329
• Patent #: 7,769,238
• Filed: July 25, 2025
• Petitioner(s): Hisense USA Corporation; Hisense Electronica Mexico S.A. de C.V.
• Patent Owner(s): VideoLabs, Inc.
• Challenged Claims: 1

2. Patent Overview

• Title: Picture Coding Method and Picture Decoding Method
• Brief Description: The ’238 patent discloses a method and apparatus for video decoding that aims to improve compression efficiency. The invention focuses on selecting a variable length code (VLC) table from a plurality of tables to decode the number of non-zero coefficients in a block of picture data, where the selection is based on a predictive value derived from the number of non-zero coefficients in spatially adjacent, previously decoded blocks.

3. Grounds for Unpatentability

Ground 1: Obviousness over Karczewicz, H.324, and H.263 - Claim 1 is obvious over Karczewicz in combination with H.324 and H.263.

• Prior Art Relied Upon: Karczewicz (International Publication No. WO 03/063501), H.324 (ITU-T Recommendation), and H.263 (ITU-T Recommendation).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the combination of H.324 and H.263, which are foundational international standards for multimedia communication, discloses every element of claim 1 except for the specific method of predicting which VLC table to use. These standards taught a complete receiving apparatus with a demultiplexer, audio processing unit, and a picture decoding unit that performs standard block-based decoding steps (e.g., inverse quantization, inverse transformation, and prediction). Petitioner contended that these elements constitute the conventional framework of the claim.

    The allegedly inventive step—determining a predictive value for selecting a VLC table based on the number of non-zero coefficients in decoded blocks on the "periphery of the current block"—is assertedly taught directly by Karczewicz. Karczewicz was presented as a proposal to improve entropy coding in standard codecs like H.263. It explicitly disclosed using the number of non-zero coefficients (Nc) from spatially neighboring blocks (e.g., top and left blocks) to select a VLC table for encoding the current block’s Nc value. Petitioner argued that Karczewicz's disclosure of using an "average" or "median" of neighboring Nc values to select from at least two VLC tables directly maps onto the limitations of claim 1 that were not met by prior art in previous challenges to the ’238 patent.

  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the H.324 and H.263 standards because they were designed to be interoperable; H.324 expressly recommended H.263 as a compatible video codec. A POSITA would have been further motivated to incorporate the teachings of Karczewicz into this established framework to achieve improved compression efficiency, a primary goal in the field of video coding. Karczewicz itself identified its method as an improvement for ITU-T standard coders like H.263 and its successor, H.26L, providing a clear reason to apply its VLC table selection technique to the system defined by the H.324/H.263 standards.

  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. Integrating Karczewicz's specific, self-contained entropy coding improvement into the well-understood, modular architecture of an H.263-compliant decoder was a straightforward application of a known technique to a standard system. The expected result was a predictable improvement in coding efficiency without altering the fundamental decoding process.

  • Key Aspects: The central thrust of the petition is that Karczewicz, which had not been previously considered by the Patent Trial and Appeal Board (PTAB) in challenges to the ’238 patent, explicitly teaches the "spatial relationship" for prediction that the PTAB found lacking in the prior art of record in a previous inter partes review (IPR).

4. Arguments Regarding Discretionary Denial

• Petitioner implicitly argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. It distinguished the current petition from two prior IPRs against the ’238 patent by asserting that the primary reference, Karczewicz, was not previously presented to or considered by the PTAB. Petitioner argued that Karczewicz cures the deficiencies identified in the prior art of the earlier challenges by teaching the critical spatial, rather than temporal, prediction method for VLC table selection and by having a priority date that predates the ’238 patent.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claim 1 of the ’238 patent as unpatentable.