Collateral Estoppel in PGR

Holding

Petitioner Unified Patents, LLC challenged the patentability of U.S. Patent No. 11,122,274 B2 (“the ’274 patent”), owned by Ideahub Inc. The Board found all claims of the ’274 patent unpatentable for lack of written description. PGR2022-00044, Paper 27 at *2.

Background 

The ’274 patent relates to “a video compression method and, more particularly, to a method and apparatus for improving compression efficiency in directional intra-prediction.” Id. at *3. Claims 1, 7, and 13 are independent. Claim 1 is reproduced below.

1. [1.0] A video decoding method performed by a video decoding apparatus, the method comprising:

[1.1] determining a neighboring intra prediction mode associated with a neighboring block, the neighboring block being adjacent to a current block;

[1.2] determining a current intra prediction mode associated with the current block based on whether the neighboring intra prediction mode associated with the neighboring block has directionality or not;

[1.3] performing intra-prediction based on the current intra prediction mode associated with the current block to generate a prediction block associated with the current block;

[1.4] obtaining transform coefficients;

[1.5] dequantizing the transform coefficients to generate dequantized transform coefficients;

[1.6] transforming the dequantized transform coefficients to generate a residual block associated with the current block; and

[1.7] reconstructing the current block based on the prediction block and the residual block,

[1.8.0] wherein determining the current intra prediction mode associated with the current block comprises:

[1.8.1] determining candidate intra prediction modes associated with the current block according to a first set of two or more mathematical expressions, when the neighboring intra prediction mode associated with the neighboring block has no directionality,

[1.8.2] determining candidate intra prediction modes associated with the current block according to a second set of two or more mathematical expressions, when the neighboring intra prediction mode associated with the neighboring block has directionality,

[1.8.3] selecting the current intra prediction mode associated with the current block among the candidate intra prediction modes,

[1.8.4] wherein the second set of two or more mathematical expressions is different from the first set of two or more mathematical expressions,

[1.8.5] wherein the second set of two or more mathematical expressions use the neighboring intra prediction mode associated with the neighboring block, and

[1.8.6] the neighboring block includes an upper block adjacent to the current block.

The ’274 patent shares the same specification as U.S. Patent No. 9,641,849 (“the ’849 patent”), which was the subject of a separate IPR proceeding (IPR2020-00702; “the ’702IPR”). In the ’702IPR, the Board found all challenged claims unpatentable, and denied patent owner’s motion to amend because the proposed substitute claims lacked written description support. IPR2020-00702, Paper 52. On appeal, the Board’s decision was affirmed by the Federal Circuit. Ideahub Inc. v. Unified Patents., LLC, No. 2022-1160, 2023 WL 1878575 (Fed. Cir. Feb. 10, 2023).

The relevant limitations of patent owner’s proposed substitute claims in the ’702IPR are reproduced below.

[19.Pre] [[1. ]]19. A video decoding method performed by a video decoding apparatus, the method comprising:

[19.1] determining an intra mode for a neighboring block of a current block;

IPR2020-00702, Paper 52 at *31.

Collateral Estoppel

The Board found that collateral estoppel in the ’702IPR precluded patent owner from arguing that the specification provided written description support for limitation 1.1 of the ’274 patent. PGR2022-00044, Paper 27 at *24.

Four factors are required to establish collateral estoppel: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. Id. at *21.

With respect to the first factor, patent owner argued that “associated with” recited in limitation 1.1 of the ’274 patent is broader than “for” as recited in limitation 19.1 of the proposed substitute claims in the ’702IPR. Id. at *19. Specifically, patent owner argued that “determining a neighboring intra prediction mode associated with a neighboring block” as recited in limitation 1.1 encompasses calculating multiple values of intra prediction modes for a neighboring block. Id.

The Board disagreed. After reviewing the specification, dictionary definitions, and the context of claim 1, the Board found that there was no indication that “associated with” means something different from “for,” and that “determining” in both claims means the same thing -- determining a single mode, i.e., a single value. Id. at *22-23. Since there was insufficient evidence to support a conclusion that the two limitations differed in scope, the Board decided that the ’702IPR presented an identical issue as in the present proceeding. Id. at *24.

As for the second, third, and fourth factors in the collateral estoppel inquiry, patent owner did not contest them in its responses. Id. at * 24. And the Board agreed with petitioner that these three requirements were present in the ’702IPR. Id. Thus, the Board ruled that patent owner was collaterally estopped from making arguments inconsistent with the conclusion reached in the ’702IPR. Id. at *27.

Since the ’849 patent and the ’274 patent shared identical specifications, the Board concluded that claim 1 of the ’274 patent lacks written description support in the specification of the ’274 patent. Id.

Take-Aways

Collateral estoppel can apply to unpatentability findings in PTAB proceedings for claims in related patents when they share identical issues of patentability and the other requirements for collateral estoppel are present.

In addition, patent owners should note the estoppel provision in 37 C.F.R. § 42.73(d)(3) precluding a patent applicant/owner from obtaining a claim that is not patentably distinct from a finally refused or canceled claim.