PTAB

IPR2017-00177

Digital Check Corp v. E ImageData Corp

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1. Case Identification

2. Patent Overview

  • Title: Digital Microform Imaging Apparatus
  • Brief Description: The ’279 patent relates to a digital apparatus for imaging microforms such as microfilm and microfiche. The claimed system includes a chassis supporting a fold mirror, a lens, an area sensor, and a movable carriage assembly driven by a motor to adjust focus and scan images. Petitioner asserted that the patent claims nothing more than a straightforward recitation of conventional, well-known microform imaging technology.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fujinawa and Kokubo - Claims 44 and 49 are obvious over Fujinawa in view of Kokubo.

  • Prior Art Relied Upon: Fujinawa (Application # 2004/0012827) and Kokubo (Patent 5,585,937).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Fujinawa disclosed a digital microform imaging apparatus that taught nearly every element of the challenged claims. Specifically, Fujinawa disclosed a base system comprising a chassis, a fold mirror, a lens, and an area sensor supported on a movable carriage. It also taught a lead member (a worm screw) and a motor to drive the carriage for focus adjustment. However, Fujinawa’s drive mechanism was a worm gear, which failed to meet the limitation in claim 44 requiring a "first motor coupled to the first carriage via a first belt." Petitioner contended this missing element was explicitly taught by Kokubo, a reference disclosing a similar microform reader. Kokubo taught using a motor, timing belt, and pulley system to move its reading unit (carriage) along a guide rail (lead member). For independent claim 49, which adds spatial requirements, Petitioner asserted that Kokubo’s figures also disclosed the claimed arrangement of a drive mechanism extending alongside and spaced apart from the lead member, with the carriage positioned between them.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to combine these references because they both operate in the narrow and analogous field of microform imaging. A POSITA would have recognized that the worm drive taught in Fujinawa and the belt-and-pulley drive taught in Kokubo were well-known and interchangeable mechanisms for converting a motor's rotational motion into the linear motion of a carriage. Kokubo itself acknowledged the interchangeability of drive mechanisms by discussing a lead screw arrangement as an alternative in its own prior art section. The combination was framed as a simple substitution of one known element for another to obtain predictable results.
    • Expectation of Success: A POSITA would have had a high expectation of success in making this combination. The substitution involved replacing one conventional drive system with another to perform its identical, expected function within a familiar apparatus, constituting a predictable design choice rather than an inventive step.

Ground 2: Obviousness over Fujinawa and Watanabe - Claims 44 and 49 are obvious over Fujinawa in view of Watanabe.

  • Prior Art Relied Upon: Fujinawa (Application # 2004/0012827) and Watanabe (Patent 5,061,955).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative combination that mirrored the logic of Ground 1. Petitioner again relied on Fujinawa to teach the fundamental microform reader system but asserted that it lacked a belt-based drive mechanism. To supply this element, Petitioner cited Watanabe, which disclosed a digital microfilm reader/printer. Watanabe taught a motor that drives a wire (which Petitioner argued was analogous to a belt) around a pair of pulleys to move a carriage (a "movable plate" holding an image sensor) along guide rails. This combination was argued to supply the "first belt" limitation of claim 44. As with Kokubo, Petitioner asserted that figures in Watanabe also demonstrated the spatial configuration required by claim 49, showing the carriage positioned between the lead member (guide rail) and the wire-and-pulley drive mechanism.
    • Motivation to Combine: The motivation to combine Fujinawa and Watanabe was presented as being identical to the motivation for combining Fujinawa and Kokubo. A POSITA seeking to design a digital microform reader would look to analogous devices like Watanabe and recognize the wire/belt drive as a common, alternative method for moving a carriage. Petitioner argued it would have been an obvious design choice to incorporate Watanabe’s well-understood drive mechanism into Fujinawa's base system to achieve the predictable function of linear carriage movement.
    • Expectation of Success: Success in combining Fujinawa and Watanabe was highly predictable. The proposed modification involved applying a known technique (a wire/belt drive) to a known system (a microform reader) to yield a known result (linear movement of an optical component). This was characterized as routine engineering, not invention.

4. Relief Requested

  • Petitioner requests that the Board institute an inter partes review of claims 44 and 49 of the ’279 patent and cancel those claims as unpatentable under 35 U.S.C. §103.