Data compression method deemed obvious. REALTIME v. IANCU

Data compression method deemed obvious. REALTIME v. IANCU

A patent is a set of exclusive rights granted to the inventor of an invention.  To obtain a patent in the United States an inventor must submit a patent application to the United States Patent and Trademark Office.  The patent application will be reviewed to determine if the invention meets all the criteria to be granted a patent.  If the United States Patent and Trademark Office determines that the invention is new, useful and not obvious, the inventor will be granted a patent.

However, even after a patent is granted it is not immune from attack.  A member of the public may request the United States Patent and Trademark Office review a granted patent with an inter partes review.  Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. For first-inventor-to-file patents, inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. These deadlines do not apply to first-to-invent patents. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Patent Trial and Appeal Board will be issued within 1 year (extendable for good cause by 6 months).

An example of a patent being invalidated with an inter partes review is: REALTIME DATA, LLC v. ANDREI IANCU, 2018-1154 (C.A.F.C. 2019). The plaintiff in this case owns U.S. Patent No. 6,597,812 which relates to a method of compressing and decompressing data stored on a computer.  Specifically the patent relates to run-length encoding and dictionary encoding.  These two methods of encoding compress data by substituting repetitive data with smaller identifiers. So a string of data like AAABBBBCCCCCCCAA would be substituted for 3A4B7C2A in run-length encoding or merely STRING1 in dictionary encoding.

Hewlett Packard  sought inter partes review of the patent on the grounds that claims were obvious over U.S. Patent No. 4,929,946 (“O’Brien”) in view of Nelson, a textbook on data compression.  The argument is essentially that the claims of the plaintiffs patent were already known and the patent should not have been granted.  The Patent Trial and Appeal Board instituted review and, in its final written decision, found that all of the challenged claims would have been obvious over the prior art.

The plaintiff appealed arguing that there was insufficient evidence of a motivation to combine the two pieces of prior art.  The Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision.  The Federal Circuit held that the O’Brien patent disclosed all the claims of the plaintiffs patent and Nelson was merely used to demonstrate that the O’Brien patent was a type of dictionary encoder.  Because a person of ordinary skill in the art would have turned to a well-known data compression textbook, to better understand compression algorithms in the O’Brien patent, there was no need to demonstrate a motivation.

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