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October 28, 2014

Harmonic, Inc. v. Avid Technology, Inc., Final Written Decision

Takeaway: In arguing that a reference teaches away from combination with another reference, one must show that the reference suggests that the developments flowing from its disclosures are unlikely to produce the objective of the patented invention.

In its Final Written Decision, the Board determined that claims 1-10 of the ’291 Patent are unpatentable and that claims 11-16 of the ’291 Patent are not unpatentable. The ’291 Patent relates to decompressing compressed video data.  The Board instituted review on the ground challenging claims 1-16 as obvious over Haskell and Rossmere.

The Board began with claim construction, noting that claim terms are given their broadest reasonable interpretation in light of the specification. The first term reviewed by the Board was “input switch . . . capable of controlling the video data flow rate.”  In the Decision to Institute, the Board construed this phrase to mean “controlling the time, duration, and rate at which video data flows into the selected input lines, and includes some level of control beyond simply turning flow on or off.”  This was Petitioner’s proposed construction and not disputed by Patent Owner.  However, upon further review, the Board determined that “into the selected input lines” is not consistent with the specification; therefore, the Board deleted that part of the construction.  The Board then reviewed the term “a predefined period of time,” for which neither Patent Owner nor Petitioner provided a construction.  Looking to dictionary definitions, the Board construed the term as “a prior defined period of time.”  The Board also adopted its constructions of the remaining terms from its Decision to Institute.

The Board then looked at the obviousness of claims 1-10. Patent Owner argued that Petitioner’s proposed combination of Haskell and Rossmere does not teach an input switch capable of controlling the video data flow rate of the selected input lines as recited in claim 1, focusing on the disclosures relating to Haskell’s demultiplexer switch 203.  The Board agreed with Petitioner that Patent Owner focused too narrowly on demultiplexer switch 203 without addressing sufficiently multiplexer switch 108 of encoder 100 together with demultiplexer switch 203 of decoder 200 as capable of controlling the video flow rate of the selected input lines.  Patent Owner also argued that Haskell does not disclose the required output switch, but the Board did not find this argument persuasive because Petitioner did not assert that Haskell explicitly or necessarily discloses an output switch, and Patent Owner’s arguments failed to sufficiently consider the teachings of Haskell as a whole or combined with Rossmere from the perspective of one of ordinary skill in the art.  The Board then addressed Patent Owner’s argument that Haskell teaches away from the combination with Rossmere, finding this unpersuasive because Patent Owner did not identify any explicit teaching away from the combination in Haskell by sufficiently explaining how Haskell suggests that any developments flowing from its disclosures are unlikely to produce a decompression system including an output switch.  Because these arguments all applied equally to claims 2-10 as they did claim 1, the Board found that claims 1-10 were rendered obvious by Haskell in view of Rossmere.

The Board then turned to the obviousness of claims 11-16, stating that after reviewing the evidence, it is not persuaded by a preponderance of the evidence that those claims are unpatentable as obvious over Haskell and Rossmere. The Board agreed with Patent Owner’s argument that the Petition does not account for the “predefined period of time” language of claim 11.  Petitioner addressed the language for the first time in the Reply, and the Board found this was improper because it was not responsive to any arguments raised in the Patent Owner Response.  Further, even if the Board considered those arguments, it found that Petitioner did not explain sufficiently how Haskell’s use of predetermined system timing for providing video data to decoder buffers teaches or suggests the predefined period of time limitation as construed by the Board.  Because claims 12-16 are dependent from claim 11, the argument also failed as to those claims.

Harmonic, Inc. v. Avid Technology, Inc., IPR2013-00252
Paper 27: Final Written Decision
Dated: July 10, 2014
Patent 5,495,291
Before: Joni Y. Chang, Kristen L. Droesch, Michael R. Zecher, and Georgianna W. Braden
Written by: Droesch

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About this Author

Nick Colic, Patent Prosecution Attorney, Drinker Biddle, Law Firm
Associate

Nick Colic is an associate in the firm's Intellectual Property Practice Group on the Patents Team.

He joined the firm from Foley & Lardner LLP in Chicago, Illinois, where he focused on patent prosecution matters in the area of mechanical engineering. Prior to his law career, he worked for three years as a mechanical engineer in the automotive group of Motorola Inc.

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