Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00252.
BORIS FELDMAN, Wilson, Sonsini, Goodrich & Rosati, PC, Palo Alto, CA, argued for appellant. Also represented by JAMES C. YOON; MICHAEL T. ROSATO, Seattle, WA; ROBIN L. BREWER, San Francisco, CA; GIDEON A. SCHOR, New York, NY; RICHARD TORCZON, Washington, DC.
GREGORY A. CASTANIAS, Jones Day, Washington, DC, argued for appellee. Also represented by DAVID B. COCHRAN, JOSEPH M. SAUER, Cleveland, OH; MATTHEW JOHNSON, Pittsburgh, PA.
SCOTT WEIDENFELLER, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by NATHAN K. KELLEY, STACY BETH MARGOLIES.
Before CHEN, MAYER, and STOLL, Circuit Judges.
[118 U.S.P.Q.2d 1199] Stoll, Circuit Judge.
Harmonic Inc. filed an inter partes review (" IPR" ) petition with the Patent Trial and Appeal Board (" Board" ) to review the patentability of Avid Technology, Inc.'s (" Avid" ) U.S. Patent No. 5,495,291 (" the '291 patent" ). The Board instituted an IPR proceeding on a subset of the grounds in the petition and ultimately determined that the instituted ground did not render claims 11-16 of the '291 patent unpatentable. Harmonic appeals the Board's final written decision, challenging both the Board's patentability determination and its refusal to revisit grounds of unpatentability that it declined to institute as redundant to the instituted ground. For the reasons below, we affirm the Board's confirmation of claims 11-16 over the instituted ground and conclude that we do not have jurisdiction to review the Board's institution decision.
Avid is the assignee of the '291 patent, issued February 27, 1996, and directed to a " system for decompressing consecutive streams of compressed video data to provide a continuous, uninterrupted decompressed video data output stream." '291 patent abstract. Many computers store video in a compressed form. One well-known compression format is MPEG. Instead of storing every video frame in full, MPEG stores only changes in one frame to the next. Before these compressed video files can be played, they must first be decompressed to restore the video's full content. Systems and methods to compress and decompress videos were well known in art at the time of the '291 patent application's filing.
The '291 patent discloses that these prior art systems and methods often generated several blank frames between first and second videos when playing multiple compressed videos back to back due to system latency. The patent explains that this latency resulted from having to wait for a decompression buffer to fill with enough frames of the second video file before decompression could begin. The '291 patent purports to teach a decompression system and method that allows play of compressed video streams one after the other without creating blank frames or a video-less gap when switching between the different streams. This result is achieved by using multiple decompression buffers. Figure 3 of the '291 patent illustrates the preferred architecture.
In this embodiment, input switch 105 accepts multiple compressed video streams. Under command of microcontroller 110, video data flows through input switch 105 to either decompression circuit 120 or 130, which decompress the input video streams and place them within a buffer 125 or 135 from which output switch 115 reads to play video to a user. Microcontroller 110 instructs input switch 105 to alternate directing input video streams to decompression circuits 120 and 130. First, microcontroller 110 instructs input switch 105 to send video streams to decompression circuit 120. At a time before the circuit 120 is predicted to finish decompressing, microcontroller 110 directs input switch 105 to send a second input video stream to decompression circuit 130 so that decompression may begin there. Because decompression of the second video stream begins before decompression of the first stream completes, there is decompressed video data in buffer 135 from the second video stream awaiting output immediately upon output completion of the first decompressed video stream. As a result, a user experiences no blank frames due to system latency.
The claims at issue in this appeal are dependent claims 11-16. Claim 9, from which claims 11-16 depend, and claim 11 recite:
9. A video decompression system comprising:
a first switch coupled to at least two video data input lines, the first switch controlling the direction and rate of video data flow from the video data input lines;
at least two video data decompression arrays coupled to the first switch, the video data decompression
[118 U.S.P.Q.2d 1201] arrays storing compressed video data, decompressing the stored compressed video data, and storing the decompressed video data;
a second switch coupled to the video data decompression arrays and to an
output bus, the second switch directing output from the at least two video data decompression arrays to the output bus; and
a controller coupled to the first switch, the video data decompression arrays, and to the second switch for controlling the flow of video data through the system.
11. The system of claim 9 wherein the controller commands the first switch to provide video data to the first video data decompression array at a first rate and to provide video data to the remaining video data decompression arrays at a second rate a predefined period of time after the first video data array begins receiving the video data at the first rate.
'291 patent col. 7 ll. 4-32 (emphasis added). Pertinent to this appeal, claim 11 requires switching to provide video data to a second decompression array at a " predefined period of time" after the first video ...