PTAB

IPR2015-01078

GoPro, Inc. v. Contour IP Holding, LLC

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1. Case Identification

  • Case #: Unassigned
  • 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 describes 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 preview a lower-quality video stream of a scene on the controller before initiating a high-quality recording on the camera itself.

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 the GoPro Sales Catalog (a 2009 printed publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Boland and the GoPro Catalog taught every limitation of the challenged claims. Boland disclosed a POV camera system (a headset) that wirelessly transmitted video data to a remote controller (a handset) for preview, including the concept of using a lower-resolution format for the preview stream. The GoPro Catalog, a commercial product brochure, disclosed a commercially available POV camera with a wireless remote featuring a preview screen, explicitly teaching the ability to "transmit a preview image of your...video before you start recording." Petitioner contended Boland taught the core system, and the GoPro Catalog provided the explicit teaching of using the preview function to frame shots and adjust settings prior to recording, a key limitation added during prosecution of the ’694 patent. For example, claim 1 requires generating video content at a first (lower) resolution for streaming and a second (higher) resolution for storage, with the controller displaying the lower-resolution content for adjustment "prior to...recording the activity." Boland taught the dual-resolution concept, and the GoPro Catalog taught the pre-recording preview for adjustment.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references to improve the functionality of Boland's system. Boland already disclosed a remote viewfinder; incorporating the GoPro Catalog’s explicit teaching of a pre-recording preview was an obvious step to enhance user convenience and prevent poor-quality recordings. This combination would allow users to properly frame shots and adjust settings, a predictable improvement involving the application of a known technique to a known device.
    • Expectation of Success: A POSA would have had a high expectation of success in this combination. Implementing a pre-recording preview function, as taught by the GoPro Catalog, into Boland's existing wireless camera system was a straightforward integration of known technologies to achieve the predictable result of improved usability.

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), the GoPro Sales Catalog, and Ueyama (Patent 7,362,352).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed the additional limitations in claims 14 and 17, which required monitoring the wireless connection's bandwidth and adjusting the preview stream's quality (e.g., frame rate or resolution) based on that bandwidth. Petitioner asserted that Boland and the GoPro Catalog established the base system as in Ground 1. Ueyama was introduced to teach the missing element. Ueyama disclosed an image capturing apparatus that explicitly addressed problems with transmitting real-time video over a wireless link by monitoring the connection speed and, if it was judged to be low, automatically "decreasing the resolution of an image to be transmitted."
    • Motivation to Combine: The motivation was to solve a well-known problem in the art: limited and variable bandwidth of wireless protocols like Bluetooth (which Boland suggested using) can degrade or interrupt a live video stream. A POSA, faced with making the preview feature of the Boland/GoPro system more robust, would have been motivated to look for known solutions. Ueyama provided a direct, known solution to this exact problem. A POSA would combine Ueyama's dynamic bandwidth adaptation with the Boland/GoPro system to ensure the best possible preview quality supported by the actual wireless link at any given moment.
    • Expectation of Success: The petition argued there was a strong expectation of success. Applying a known technique (dynamic quality adjustment based on bandwidth from Ueyama) to solve a known problem (unreliable streaming over wireless from Boland) would yield the predictable benefit of a more stable and reliable preview function.

4. Key Claim Construction Positions

  • "Scene to be recorded": Petitioner argued this term, recited in independent claims 1 and 11, should be construed to mean "a scene viewed by the camera prior to recording." This construction was critical to their argument that the prior art's teaching of a pre-recording preview for framing and adjustment met the claim limitations.
  • "Record": Petitioner proposed that "record" meant to "store in response to a record command," distinguishing it from temporary storage in a buffer. This was used to align the prior art's functionality (e.g., Boland storing a "clip file" on command) with the claim language, arguing that temporary buffering in the prior art did not negate its teaching of the claimed "recording" step.

5. Key Technical Contentions (Beyond Claim Construction)

  • The petition's "State of the Art" section contended that by the patent's 2010 priority date, the field was already well-developed. It was argued to be common knowledge for a POSA that portable, wireless, POV cameras existed; that generating dual-resolution (high for storage, low for preview/thumbnails) video content was conventional (e.g., in standard camcorders); and that transmitting a lower-quality stream over a bandwidth-limited wireless link was a common-sense solution to a known constraint. This underlying technical landscape was presented to frame the claimed invention not as a breakthrough, but as a predictable combination of a finite number of known design choices.

6. 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 under 35 U.S.C. §103.