Google LLC v. Koninklijke Philips N.V.

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

GOOGLE LLC,

Appellant

v.

KONINKLIJKE PHILIPS N.V.,

Appellee

______________________

2018-2213

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2017-

00437.

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Decided: October 23, 2019

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DAVID M. KRINSKY, Williams & Connolly LLP, Wash-

ington, DC, argued for appellant. Also represented by

KEVIN HARDY, AARON P. MAURER.

JUSTIN J. OLIVER, Venable LLP, Washington, DC, ar-

gued for appellee.

______________________

Before MOORE, BRYSON, and CHEN, Circuit Judges.

2 GOOGLE LLC v. KONINKLIJKE PHILIPS N.V.

CHEN, Circuit Judge.

Google appeals from the final written decision of the

United States Patent and Trademark Office Patent Trial

and Appeal Board (Board) in the above-captioned inter

partes review proceeding. The Board found that petitioner-

appellant Google failed to meet its burden of establishing

that challenged claims 10–16, 20, and 21 of U.S. Patent No.

6,772,114 (the ’114 patent) are unpatentable on either of

two grounds: (1) anticipation by Patent Cooperation Treaty

(PCT) International Application Publication No. 98/52187

(Tucker), or (2) obviousness over Tucker in view of well-

known art. We agree with the Board as to both grounds

and therefore affirm.

The ’114 patent generally relates to an encoding

scheme for transmitting audio signals. See ’114 patent at

Abstract. The challenged claims all require a “second de-

coder” that “applies a high-pass filter . . . to a noise signal

to generate” a reconstructed signal within a high-frequency

range. See id. at claims 10, 20 (emphasis added). Inde-

pendent claim 10 is representative of the challenged claims

and recites the disputed “high-pass filter”:

10. A transmission system, comprising:

a transmitter including

a splitter for splitting up a transmission

signal into a low frequency signal within a

low frequency range and a high frequency

signal within a high frequency range, the

low frequency range being lower than the

high frequency range,

a first coder for deriving a first coded signal

within the first frequency range from the

low frequency signal, and

GOOGLE LLC v. KONINKLIJKE PHILIPS N.V. 3

a second coder for deriving a second coded

signal within the high frequency range

from the high frequency signal;

a receiver in electrical communication with said

transmitter to receive the first coded signal and the

second coded signal, said receiver including

a first decoder for sequentially applying a

narrow-band decoder, an up-sampler and a

low-pass filter to the first coded signal to

generate a first reconstructed signal within

the first frequency range, and

a second decoder, wherein, based on the

second coded signal, said second decoder

sequentially applies a high-pass filter, a

LPC synthesis filter and an amplifier to a

noise signal to generate the second recon-

structed signal.

’114 patent at claim 10 (emphasis added).

A. Anticipation

Anticipation is a question of fact reviewed for substan-

tial evidence. Synopsys, Inc. v. Mentor Graphics Corp., 814

F.3d 1309, 1317 (Fed. Cir. 2016). The central dispute on

appeal is whether Tucker’s disclosure of a low-pass filter

and reflection step is the claimed high-pass filter.

Under the Board’s construction, which is not disputed

on appeal, the claimed high-pass filter “transmits frequen-

cies above a given cutoff frequency and substantially atten-

uates all others.” J.A. 4814 (emphasis added). Google

argues that Tucker’s low-pass filter and reflection steps to-

gether disclose the claimed “high-pass filter” because these

steps collectively transmit the desired high-band portion of

the input signal while attenuating the low-band portion of

the input. We disagree. Google concedes that the Board

correctly found that Tucker’s low-pass filter transmits

4 GOOGLE LLC v. KONINKLIJKE PHILIPS N.V.

frequencies below a given cutoff frequency. Appellant’s Br.

at 52–53; see also J.A. 14. And Tucker’s reflection step

merely takes the low-frequency band output of its low-pass

filter and moves that content to the high-frequency band.

See Tucker at 14, ll. 16–27. Collectively, then, Tucker’s

low-pass filter and reflection steps transmit the low-fre-

quency content of an input signal (albeit in the high-fre-

quency band), and do not transmit the input signal’s high-

frequency content. Google’s expert admitted as much. See

J.A. 5261, 66:5–17 (conceding that a low-pass filter whose

output is reflected to the upper band does not transmit the

high-frequency components of an input signal). Thus, sub-

stantial evidence supports the Board’s finding that

Tucker’s low-pass filter and reflection steps do not disclose

the claimed “high-pass filter,” because Tucker does not

transmit the high-frequency content of an input signal.

Google additionally argues that Tucker’s low-pass and

reflection steps are collectively the claimed “high-pass fil-

ter” because they achieve the same result as a high-pass

filter. We are unpersuaded. The similarity of the resulting

information that is produced by Tucker’s system to what

would have been produced if Tucker had actually employed

a high-pass filter does not convert Tucker’s low-pass filter

and reflection steps into a high-pass filter that transmits

the high-band content. To the contrary, Tucker’s process

discards the high-band content of the input signal.

Though the design of a high-pass filter may include a

low-pass filter, the inclusion of a low-pass filter does not

alter the functionality of the high-pass filter. The ’114 pa-

tent discloses one such example in which the output of a

low-pass filter is used to remove, by subtraction, the low-

frequency components of the input signal. ’114 patent at

col. 4, ll. 8–12 (explaining that “the low frequency range in

the difference signal is absent”). In other words, the low-

pass filter is used to attenuate the portion of the input sig-

nal below a cut-off frequency, leaving only frequencies

above the cut-off to be transmitted—precisely the

GOOGLE LLC v. KONINKLIJKE PHILIPS N.V. 5

functionality that the claimed high-pass filter performs. In

contrast, Tucker’s low-pass and reflection process only

transmits the portion of the input signal that is below a

cut-off frequency. Google’s reliance on the ’114 patent’s in-

clusion of a low-pass filter in its high-pass filter is thus mis-

placed.

In sum, we agree with the Board that Tucker’s low-pass

and reflection process cannot be the claimed “high-pass fil-

ter” because this process does not transmit frequencies

above a given cutoff frequency and does not substantially

attenuate all others. The Board’s conclusion that Google

failed to meet its burden to establish that the challenged

claims are anticipated by Tucker is supported by substan-

tial evidence.

B. Google’s Untimely Arguments Before the Board

On appeal, Google argues that the Board abused its

discretion in failing to consider Google’s argument that it

would have been obvious to include a high-pass filter in

Tucker’s receiver in place of its low pass filter and reflec-

tion process. We disagree.

Google’s petition for inter partes review argued that the

claims at issue were obvious over Tucker in view of the al-

leged knowledge of a person of skill in the art. J.A. 94. Alt-

hough the Board instituted the inter partes review

proceedings on this separate ground, the Board in its final

written decision declined to consider Google’s argument

that it would have been obvious to include a high-pass filter

in Tucker’s receiver. J.A. 19–20. The Board explained that

this argument was raised for the first time in Google’s Re-

ply briefing, and thus patent owner Koninklijke did not

have a fair and meaningful opportunity to respond. Id.

We review the Board’s decision not to consider an un-

timely argument for abuse of discretion. Intelligent Bio-

Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,

1367 (Fed. Cir. 2016). Although Google argues that the

6 GOOGLE LLC v. KONINKLIJKE PHILIPS N.V.

obviousness of filters was raised at the depositions of the

parties’ experts, Google concedes that it never raised this

theory of including a high-pass filter in Tucker’s receiver in

its petition for inter partes review. See Oral Arg. at 11:44–

12:11, http://oralarguments.cafc.uscourts.gov/de-

fault.aspx?fl=2018-2213.mp3; J.A. 5461. We find that the

Board was within its discretion in declining to consider this

obviousness theory that was outside the scope of the peti-

tion for inter partes review. 1

CONCLUSION

We have considered Google’s remaining arguments and

find them unpersuasive. For the reasons stated above, we

affirm the Board’s conclusion that Google failed to meet its

burden of showing that the challenged claims are antici-

pated by Tucker or obvious over Tucker and the well-

known art.

AFFIRMED

1 The Board also rejected Google’s untimely argu-

ments as unpersuasive. J.A. 20 n.8. Because we agree with

the Board that Google’s arguments were untimely, we do

not reach the issue of whether it would have been obvious

to include a high-pass filter in Tucker’s decoder.