IP Law Daily, PATENT—Fed. Cir.: Video encoding patent claims challenged by Netflix in IPR were obvious, (Dec 15, 2022)

By Kevin M. Finson, J.D.

The PTAB’s obviousness rulings were affirmed because expert testimony supported the Board’s claim constructions.

The Patent Trial and Appeal Board did not err in finding that four claims of a patent for video encoding were invalid as obvious, the U.S. Court of Appeals for the Federal Circuit has held. The claim construction challenged on appeal was supported by expert testimony and the plain language of the claims (Uniloc 2017 LLC v. Netflix, Inc., December 15, 2022, Hughes, T.).

Uniloc 2017, LLC (Uniloc) was the owner of U.S. Patent No. 6,584,229 (the ’229 patent), which related to a method for compressing and encoding videos and claimed to improve over the prior art by dividing a given frame of video into a stationary background region and a moving foreground region and reusing stationary material from the background region rather than copying that same information over and over again for each frame of the video. Netflix, Inc. (Netflix) petitioned for inter partes review, arguing that claims 1, 3, 5, and 6 of the ’229 patent were obvious in light of the prior art. The Board found the challenged claims were obvious. Uniloc appealed, arguing the Board erred in claim construction.

Claim construction. Uniloc contended that the Board erred in construing the requirement that the foreground and background regions be divided on a “macroblock-by-macroblock” basis. (A macroblock was defined as 16x16 grid of pixels.) The Board had construed this term as requiring only that the end result of the division process give results in terms of macroblocks, while Uniloc argued that it required a division process done one macroblock at a time. The Federal Circuit found the language of the claim terms was ambiguous, so the Board was entitled to rely, as it did, on the testimony of Netflix’s expert about the meaning of that term to a person of ordinary skill in the art. Uniloc provided no contrary expert testimony, so there was no issue with regard to this term.

Uniloc also argued that the Board erred by construing the limitation “selected known coding technique” as not requiring a separate “selecting” step in its coding process because to do otherwise would be not to give effect to all the words in the claim. The dourt held that the Board did in fact give effect to the term “selected,” but that it referred to selecting a coding technique as part of the design of the patented invention, not to a step to be carried out during the encoding process itself.

Finding no error in claim construction, the Federal Circuit affirmed the decision of the Board.

The Case is No. 21-2085.

Attorneys: Nathan K. Cummings (Etheridge Law Group) for Uniloc 2017 LLC. Patrick John Mckeever (Perkins Coie LLP) for Netflix, Inc.

Companies: Uniloc 2017 LLC; Netflix, Inc.

Cases: Patent FedCirNews USPTO