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Harmonic Inc. v. Avid Tech., Inc.

United States Court of Appeals for the Federal Circuit

March 1, 2016, Decided

2015-1072

Opinion

 [***1199]  [*1358]   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")  [***1200]  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 [**2]  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

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 [**3]  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.

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815 F.3d 1356 *; 2016 U.S. App. LEXIS 3727 **; 118 U.S.P.Q.2D (BNA) 1198 ***

HARMONIC INC., Appellant v. AVID TECHNOLOGY, INC., Appellee

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00252.

Disposition: AFFIRMED.

CORE TERMS

video, patent, decompression, grounds, instituted, unpatentable, switch, written decision, array, prior art, streams, input, compressed, redundant, phase, inter partes, buffers, encoder, proceedings, decoder, frames, merits, period of time, regulations, predefined, directs, teaches, output, predetermined, authorize

Patent Law, Jurisdiction & Review, Standards of Review, De Novo Review, Nonobviousness, Elements & Tests, Ordinary Skill Standard, Substantial Evidence, Business & Corporate Compliance, Patent Law, US Patent & Trademark Office Proceedings, Reexamination Proceedings, Evidence, Burdens of Proof, Allocation, Civil Procedure, Appeals, Appellate Jurisdiction, Subject Matter Jurisdiction, Appeals, Administrative Law, Agency Rulemaking, Judicial Review, Deference to Agency Statutory Interpretation