PTAB

IPR2015-00724

Google Inc v. Inventor Holdings LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Systems and Methods for Suggesting Meta-Information to a Camera User
  • Brief Description: The ’921 patent discloses a method and apparatus for analyzing a digital image to associate a person’s name with it. The system uses face recognition to compare a newly captured image against a database of stored images, identifies a potential match, and suggests the associated name to a user as a meta-tag, who can then confirm or reject the suggestion before it is stored.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aas in view of Kuchinsky - Claims 1-17 are obvious over Aas in view of Kuchinsky

  • Prior Art Relied Upon: Aas (Patent 7,843,495) and Kuchinsky (a May 1999 journal article titled “FotoFile: A Consumer Multimedia Organization and Retrieval System”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Aas, which was considered during prosecution, discloses the majority of the claimed features, including an imaging system that recognizes people and stores their names as meta-data by comparing a captured image to a face database. The key limitations that the Examiner found novel over Aas were (1) outputting the name as a suggestion with an opportunity for the user to agree or reject it, and (2) storing the name as a meta-tag only after receiving user agreement. Petitioner contended that Kuchinsky, which was not before the Examiner, explicitly teaches these missing elements. Kuchinsky’s FotoFile system discloses that a user must “either correct or confirm the choice” made by the face recognition system and that annotations are only validated and stored after this user confirmation to handle false positives.
    • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would combine Aas and Kuchinsky as they are in the same field and address the same goal of organizing and labeling images. A POSITA would have been motivated to integrate Kuchinsky’s user-confirmation step into Aas’s automated system to improve the accuracy of the meta-data, a known desirability in the field for overcoming the inherent inaccuracies of automated face recognition.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references, as implementing a user confirmation prompt was a known and straightforward method for improving the reliability of automated tagging systems.

Ground 2: Obviousness over Aas in view of Stubler - Claims 1-17 are obvious over Aas in view of Stubler

  • Prior Art Relied Upon: Aas (Patent 7,843,495) and Stubler (Patent 6,804,684).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative combination to supply the limitations missing from Aas. Petitioner argued that Stubler, like Kuchinsky, was not before the Examiner and explicitly teaches the user-confirmation features. Stubler discloses a method for associating captions with images that includes a step of “providing said one or more of the automatically-extended captions or labels associated with the selected stored images for user verification or correction before using them as captions or labels for the acquired image.” This directly corresponds to the limitations the Examiner found novel in the ’921 patent.
    • Motivation to Combine: The motivation was similar to Ground 1. A POSITA would combine the teachings of Stubler with the system of Aas to enhance accuracy. Stubler itself teaches that user input is important for correct image indexing. Therefore, a POSITA would be motivated to add Stubler’s user verification interface to Aas’s system to ensure that automatically generated tags are correct before being stored.
    • Expectation of Success: Combining a known user verification method (Stubler) with an automated recognition system (Aas) was a predictable approach to improving system performance, and a POSITA would reasonably expect the resulting system to function as intended.

Ground 3: Anticipation by Kuchinsky - Claims 16 and 17 are anticipated by Kuchinsky

  • Prior Art Relied Upon: Kuchinsky (a May 1999 journal article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kuchinsky, standing alone, discloses every element of method claims 16 and 17. The petition provided a detailed mapping showing that Kuchinsky’s FotoFile system performs each step of the claimed method: identifying a digital image of a person, accessing a database, comparing the image to stored images, identifying a match, determining a name, outputting that name to a user for confirmation or correction, and storing the name as a validated annotation only after receiving that confirmation.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge that Claim 1 is obvious over Kuchinsky alone, arguing that since Kuchinsky discloses the method of Claim 16, creating an apparatus to perform that method would have been obvious.

4. Key Claim Construction Positions

  • Petitioner argued that the phrase "store/ing the name ... after agreement rather than rejection is received from the user" should be construed to mean storing the name as a meta-tag only if agreement is received.
  • This construction was central to the invalidity argument, as Petitioner contended that the Patent Owner emphasized this "store only after confirmation" feature during prosecution to distinguish the invention from Aas. Petitioner argued that prosecution history estoppel barred any broader interpretation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-17 of Patent 8,558,921 as unpatentable.