Harmonic Inc. v. Avid Tech., Inc.

• Decision Date: 01 March 2016
• Docket Number: No. 2015–1072.,2015–1072.
• Citation: 815 F.3d 1356
• Parties: HARMONIC INC., Appellant v. AVID TECHNOLOGY, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

815 F.3d 1356

HARMONIC INC., Appellant

v.AVID TECHNOLOGY, INC., Appellee.

No. 2015–1072.

United States Court of Appeals, Federal Circuit.

March 1, 2016.

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.

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 patentunpatentable. 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.

BACKGROUND

I.

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 patentabstract. 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 patentapplication's filing.

The ′291 patentdiscloses 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 patentpurports 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 patentillustrates 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 130,¹ 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 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 patentcol. 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 compression array receives data. Id. col. 7 ll. 27–32.

II.

Harmonic petitioned for IPR of the ′291 patent, alleging that, in view of seven different prior art grounds, all twenty of the patent's claims were unpatentable as anticipated under 35 U.S.C. § 102or as obvious under 35 U.S.C. § 103.² The Board instituted IPR on claims 1–16 based on the obviousness ground of U.S. Patent No. 5,159,447 ("Haskell")combined with U.S. Patent No. 5,508,940 ("Rossmere"). The Board did not institute based on four other grounds in Harmonic's petition directed at claims 1–16, calling them "redundant" of the instituted ground. In addition, the Board did not institute IPR on claims 17–20, disposing of the remaining two grounds.

The Haskell patent discloses a system for avoiding overflow and underflow of buffers during video encoding and decoding. As illustrated in Figures 2 and 3 below, Haskell's device includes encoder system 100 and decoder system 200, which are connected by a channel that runs from the encoder's multiplexer to the decoder's demultiplexer.

Encoder system 100 includes multiple encoder buffers 106, and decoder system 200 includes multiple decoder buffers 205. Haskell's encoder controls two aspects of the system to avoid buffer overflow and underflow: (1) the number of bits employed to encode each video frame; and (2) the bitrate of the channel connecting the encoder and decoder.

The Board's final written decision concluded that claims 1–10 of the ′ 291 patentwere unpatentable in view of Haskell combined with Rossmere. At the same time, the Board found claim 11—along with claims 12–16, which depend from claim 11—patentable over the instituted prior art ground. Particularly, the Board found that Haskell combined with Rossmere did not satisfy the "predefined period of time" limitation in claim 11, which it construed to mean "a prior defined period of time." Harmonic, Inc. v. Avid Tech., Inc., IPR2013–00252, 2014 WL 3422011, at *5, *13–14 (P.T.A.B. July 10, 2014)(Final Written Decision).

Harmonic timely appealed to this court, and we have jurisdiction under 28 U.S.C. § 1295(a)(4)(A)and 35 U.S.C. § 141(c)to review the Board's final written decision.

DISCUSSION

On appeal, Harmonic argues that the Board erred in concluding that claim 11 (and claims 12–16, which depend from it) is patentable in light of the instituted prior art ground. Harmonic also argues that the Board should have considered all prior art grounds in its petition, especially after finding claim 11 patentable in view of the instituted ground. We address each argument in turn.

I.

We first consider Harmonic's argument that the Board erred in determining that claims 11–16 are patentable in light of Haskell combined with Rossmere.

A patent claim is unpatentable as obvious "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. § 103. Obviousness under § 103is a mixed question of law and fact. The Board's ultimate determination on obviousness is a legal conclusion, which we review de novo. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed.Cir.2015)(citing In re Baxter Int'l, Inc., 678 F.3d 1357, 1361 (Fed.Cir.2012)), cert. granted sub nom., Cuozzo Speed Techs., LLC v. Lee, ––– U.S. ––––, 136 S.Ct. 890, 193 L.Ed.2d 783 (2016). We review the Board's underlying factual findings, including what a reference teaches and differences between the prior art and the claims, for substantial evidence. Id. (citing Graham v. John Deere Co., 383 U.S. 1, 17–18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)).

In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable. See 35 U.S.C. § 312(a)(3)(requiring IPR petitions to identify "with particularity ... the evidence that supports the grounds for the challenge to each claim"). Thus, it was Harmonic's burden to explain to the Board how Haskell combined with Rossmere rendered the challenged claims unpatentable. With respect to claim 11 of the ′291 patent, Harmonic did not do so.

Claim 11 requires that the system's...