Harmonic, Inc. v. Avid Tech., Inc.
Addressing the patent owner’s burden of showing non-obviousness in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB, or the Board) found some of the challenged claims were unpatentable as obvious, concluding that the patent owner had failed to show that the claims were patentable over the prior art. Harmonic, Inc. v. Avid Tech., Inc., Case IPR2013-00252 (PTAB, July 10, 2014) (Droesch, APJ).
Harmonic petitioned for an IPR of claims of a patent owned by Avid Technology. The claimed invention relates to decompressing compressed video data. The Board instituted review on the grounds challenging the claims as obvious over two prior art references. In its final decision, the Board determined that some of the claims were unpatentable under § 103(a) and others were valid.
The patent owner argued the proposed combination of the prior art did not teach an input switch capable of controlling the video data flow rate of the selected input lines, as required by an independent claim. The petitioner argued the patent owner focused too narrowly on the demultiplexer switch in the prior art reference and failed to sufficiently address the prior art references as a whole. Additionally, the petitioner argued that the patent owner ignored the construction of “switch” as requiring “a device or assembly for routing or selecting a data stream.”
The Board agreed with the petitioner and concluded that the patent owner did not meet its burden to prove the claims were not unpatentable because the patent owner failed to address the combination of the two prior art references as a whole. The Board noted that “[a]s pointed out by Petitioner, Patent Owner fails to address the relevant components and functionality provided in the encoding system.” Specifically, the Board explained that the patent owner’s arguments improperly ignored the claim construction made at institution and addressed the teachings of the individual prior art reference in isolation. The Board further explained that the petitioner did not assert that a single prior art reference explicitly or necessarily disclosed an output switch, and therefore the patent owner’s arguments failed to sufficiently consider the teachings of the prior art reference as a whole, or combined with the other prior art reference, from the perspective of one of ordinary skill in the art. The Board also found unpersuasive patent owner’s argument that the prior art references teach away from the combination, as the patent owner failed to identify any statement in the prior art reference that explicitly taught away from the combination. Thus, the Board concluded that the patent owner failed to satisfy its burden of proving the claims are patentable.