MPEG-2 Patents Review ISO/IEC 13818 Rob Glidden, December 2011

1. MPEG-2 Patents ReviewISO/IEC 13818 Rob Glidden, December 2011

2. Disclaimer • Information provided to facilitate consideration of Type-1 / royalty-free MPEG standardization* • Not to be used as legal advice • Not represented as comprehensive • Only public sources considered • Corrections, additions & comments welcome * See N12204, Call for Proposals (CfP) for Internet Video Coding Technologies, ISO/IEC JTC1/SC29/WG11, July 2011, Torino, Italyhttp://mpeg.chiariglione.org/working_documents/explorations/ivc/ivc-cfp.zip

3. Motivation • MPEG-2 patents are a logical reference point for IPR analysis for royalty-free MPEG Internet Video Codec • MPEG-2 patent pool scrutinized by US Department of Justice* • Pool list updated regularly since 1996 • MPEG-2 is widely deployed (digital TV, DVDs, Blu-ray, etc.) • MPEG-2 is a core competency of MPEG/WG11 • By July 2013, anticipated completion of MPEG IVC standard: • 75% of (US) patents will have expired • 25% of (US) patents will remain • 11% (15 patents) outside interlace & systems categories will remain * See US Department of Justice Business Review Letter, MPEG LA, L.L.C., et al., June 26, 1997, at http://www.justice.gov/atr/public/busreview/215742.htm

4. Related Materials • “US Patent Expiration for MP3, MPEG-2, H.264”* • “Emergence of Essential Patents in Technical Standards: Implications of the Continuation and Divisional Application Systems and the Written Description”** • "With regard to the MPEG-2 standard, ... 44% are those based on divisional, continuation, or CIP applications." • Nero AG v. MPEG LA • “Because at least two patents in the original [1996] pool will not expire until 2014, it is impossible that the [subsequently added] patents were added to extend the duration of the MPEG-2 pool because the “new” patents expire before the original patents.”*** * http://www.osnews.com/story/24954/US_Patent_Expiration_for_MP3_MPEG-2_H_264/ ** M. Omachi, Dec. 2004, at http://www.iir.hit-u.ac.jp/iir-w3/event/WP05-02omachi.pdf *** Nero AG v. MPEG LA, L.L.C. Case No. 10-cv-3672-MRP-RZ, ORDER RE: DEFENDANT MPEG LA, L.L.C.’S MOTION TO DISMISS THE FIRST AMENDED COMPLAINT, 11/24/2010

5. Statistics • 134 US patents • Including original1996 list of 27* • 92 parent applications • Most recently added patent: • 7,936,817 (added 7/1/11) * Memorandum, Patent List for MPEG-2 Patent Pool, MPEG-2 IPR Working Group, October 4, 1996

6. Priority • Earliest: Dec. 15, 1978 • Latest: Apr. 22, 1994

7. Expiration • 50% (67) will expire by Oct. 16, 2012 • 75% (100)will expire byJuly 31, 2013

8. Expiration By Source • Last-expiring • 6,792,001, 24-May-2017 • 6,160,849, 11-Dec-2017 • 6,181,712, 30-Jan-2018 • 7,334,248, 14-Feb-2018 • Last-expiring of Original 27 • 5,457,701, 5-Jan-2014 • 5,481,553, 27-Feb-2014 • 5,420,866, 28-Mar-2014

9. Unexpired as of July 31, 2013 • 25% (34) will remain unexpired as ofJuly 31, 2013 • 11 interlace • 8systems • 2 systems & video • 13 other video

10. MPEG-2 Patents List* * See “MPEG-2 Patent List”, December, 2011

11. MPEG-2 Patents ListFields Tracked* * See “MPEG-2 Patent List”, December, 2011

12. Conclusion • 34 MPEG-2 patents (25% of 134) will remain unexpired as of July 31, 2013 • 11 interlace • 8 systems • 2 systems & video • 13 other video • Last expires Feb 2018 • Last of original 27 expires March 2014

13. Thank You!

14. Relevant Dates

15. US Patent System Notes

16. Glossary Continuation: "a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented.... The disclosure presented in the continuation must be the same as that of the original application; i.e., the continuation should not include anything which would constitute new matter if inserted in the original application." MPEP 201.07 Continuation-in-part: "an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application." MPEP 201.08 Divisional: "A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application .... A divisional application is often filed as a result of a restriction requirement made by the examiner." MPEP 201.06 Patent Cooperation Treaty (PCT): provides a mechanism by which an applicant can file a single application that, when certain requirements have been fulfilled, is equivalent to a regular national filing in each designated Contracting State. "[T]he applicant has up to 18 months more than he has in a procedure outside the PCT to reflect on the desirability of seeking protection in foreign countries ...." WIPO, Patent Cooperation Treaty Foreign filed application: "Under certain conditions and on fulfilling certain requirements, an application for patent filed in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country, to overcome an intervening reference or for similar purposes." MPEP 201.13. "Foreign priority ... is not considered in determining the term of a patent." MPEP 2701.