GoPro Inc v. Contour IP Holding LLC

1. Case Identification

• Case #: IPR2015-01078
• Patent #: 8,896,694
• Filed: April 20, 2015
• Petitioner(s): GoPro, Inc.
• Patent Owner(s): Contour, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Portable Digital Video Camera Configured for Remote Image Acquisition Control and Viewing
• Brief Description: The ’694 patent discloses a point-of-view (POV) digital video camera system. The system features a hands-free, viewfinderless camera that wirelessly communicates with a separate controller (e.g., a smartphone), allowing a user to remotely preview a scene, adjust settings, and initiate recording.

3. Grounds for Unpatentability

Ground 1: Claims 1-13, 15-16, and 18-20 are obvious over Boland in view of the GoPro Catalog.

• Prior Art Relied Upon: Boland (Application # 2010/0118158) and GoPro Catalog (a July 2009 sales catalog).
• Core Argument for this Ground: Petitioner argued that the challenged claims represented an obvious combination of known features for POV cameras. Boland taught the core system of a wearable, viewfinderless camera wirelessly connected to a handset for control and preview. The GoPro Catalog, a printed publication from the same field, merely added conventional and predictable features like previewing before recording and using specific mounts for action sports.
  • Prior Art Mapping: Petitioner asserted that Boland disclosed a hands-free, portable, viewfinderless camera system (a headset camera) that wirelessly transmits video data to a controller (a handset like an iPhone) which serves as a remote viewfinder. Boland was also alleged to teach generating video content at two resolutions—a higher resolution for recording and a lower resolution for preview on the controller. The GoPro Catalog was cited to explicitly teach the benefits of streaming a preview image to a wireless remote before starting to record, a feature Petitioner argued was an obvious implementation of Boland’s preview functionality. The Catalog also disclosed a full line of mounts for attaching a POV camera to a user’s body, garment, or vehicle, satisfying the mounting limitations in the claims.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Boland and the GoPro Catalog to improve the user experience, a predictable goal. Implementing Boland’s preview function before recording, as taught by the GoPro Catalog, would provide the obvious benefit of allowing users to frame shots and adjust settings to avoid poor quality recordings. Furthermore, a POSITA would have been motivated to equip Boland's wearable camera with the versatile mounting options from the GoPro Catalog to enhance its utility for the well-known action sports market.
  • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success. The combination involved applying known techniques (pre-recording preview, physical mounts) to a known device (a wireless POV camera) to achieve predictable improvements in convenience and functionality.

Ground 2: Claims 14 and 17 are obvious over Boland in view of the GoPro Catalog and Ueyama.

• Prior Art Relied Upon: Boland (Application # 2010/0118158), GoPro Catalog (a July 2009 sales catalog), and Ueyama (Patent 7,362,352).
• Core Argument for this Ground: This ground added Ueyama to the combination of Boland and the GoPro Catalog to address the additional limitations in claims 14 and 17, which require monitoring the wireless bandwidth and adjusting the preview stream’s frame rate or resolution based on that bandwidth.
  • Prior Art Mapping: Petitioner argued the base system was established by Boland and the GoPro Catalog, as detailed in Ground 1. Ueyama was introduced because it explicitly taught solving the known problem of transmitting real-time video over a variable-speed communication link. Ueyama disclosed monitoring the transmission speed (bandwidth) of a wireless connection and, if it is judged to be low-speed, decreasing the resolution of the transmitted image to ensure a stable stream.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Ueyama’s teachings into the Boland/GoPro system to solve the well-known problem of bandwidth limitations in wireless technologies like Bluetooth, which Boland itself suggested using. Adding the ability to dynamically adjust video quality based on available bandwidth would ensure the user receives the highest quality preview possible without interruption, a predictable and desirable improvement for any wireless video system.
  • Expectation of Success: Petitioner argued success would have been highly probable. Dynamically adapting streaming quality to available bandwidth was a common and well-understood solution to a known problem in wireless data transmission. Applying this established technique to the wireless camera system of Boland would have yielded the expected result of a more robust and reliable remote preview feature.

4. Key Claim Construction Positions

• "Scene to be recorded": Petitioner argued this term means a scene viewed by the camera prior to a user initiating a recording command. This construction was central to its argument that the prior art’s teaching of previewing before recording was relevant.
• "Record": Petitioner proposed this term means to store video in response to an explicit record command, distinguishing it from temporary storage in a buffer. This was used to map Boland's functionality, where a user command causes a "clip file" to be permanently stored from a temporary buffer.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of all challenged claims (1-20) of the ’694 patent as unpatentable.