PTAB

IPR2017-00178

Digital Check Corp v. E ImageData Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Microform Imaging Apparatus
  • Brief Description: The ’019 patent discloses a digital microform imaging apparatus for scanning and digitizing microform media. The invention purports to be more compact and versatile than prior art readers by arranging components such as a chassis, lens, mirror, and image sensor in a specific configuration, including systems with one or two movable carriages for adjusting focus and zoom.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-9, 20-32, 41, 43-44, 47, 53, and 63 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 discloses a digital microform imaging apparatus nearly identical to the one claimed, teaching key elements such as a chassis, fold mirror, motor, area sensor, lens, and a dual-carriage system for independently moving the lens and sensor along an optical axis. However, Fujinawa’s system uses a lead screw (worm gear) drive mechanism. Petitioner asserted that Kokubo remedies this difference by disclosing a well-known alternative drive mechanism using a belt-and-pulley system coupled to a guide rail (lead member) to move a carriage.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because substituting one known mechanical drive system for another was a common and simple design choice in the field of microform imaging. A POSITA seeking to implement linear motion for the carriages in Fujinawa would have found it obvious to use the belt-and-pulley system taught by Kokubo as an interchangeable and equally viable alternative to Fujinawa’s lead screw.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the substitution would predictably achieve the same result of moving a carriage along an optical path using conventional and well-understood mechanical principles.

Ground 2: Claims 33-35, 37, 39-41, and 54-57 are obvious over Fujinawa in view of Kokubo and Minolta.

  • Prior Art Relied Upon: Fujinawa (Application # 2004/0012827), Kokubo (Patent 5,585,937), and Minolta (Minolta film carrier manuals).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Fujinawa and Kokubo to address claims related to film handling and media support structures. While Fujinawa and Kokubo teach the core imaging apparatus with its drive system, Petitioner argued the Minolta manuals disclose specific film handling features not found in the primary combination. Minolta teaches a media support structure with side-by-side supply and take-up roll film attachments, in contrast to Fujinawa’s in-line (front-to-back) film path. Minolta also discloses a media support structure that moves horizontally within a plane orthogonal to the light path.
    • Motivation to Combine: A POSITA would combine Minolta's teachings because its universal film carriers were designed for use with a variety of readers. A designer would have been motivated to incorporate Minolta's side-by-side film handling layout and movable support structure into the Fujinawa/Kokubo apparatus as a known design alternative to achieve a more compact or user-friendly configuration.
    • Expectation of Success: Integrating Minolta’s modular and universally compatible film carrier into the base apparatus would predictably result in a fully functional microform reader incorporating the desired film handling characteristics.

Ground 3: Claims 64-68, 74, 79, 81, 84-87, 91-96, and 101 are obvious over Fujinawa in view of Minolta.

  • Prior Art Relied Upon: Fujinawa (Application # 2004/0012827) and Minolta (Minolta film carrier manuals).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground challenged claims directed to the overall physical structure and layout of the apparatus. Petitioner contended that Fujinawa’s housing teaches the claimed structure of a chassis forming a first (lower) cavity and a housing cover forming a second (upper) cavity, separated by a horizontal window and gap where the film passes. The Minolta manuals were cited for teaching a microform media support structure that is located within this gap and is mounted to the chassis via elongated brackets and rails, enabling both longitudinal (front-to-back) and transverse (side-to-side) sliding motion.
    • Motivation to Combine: A POSITA would have been motivated to combine Minolta's versatile media support structure with Fujinawa’s core imaging apparatus to gain the benefit of Minolta's advanced film positioning capabilities. This combination represented the integration of a well-known, high-functionality film carrier with a standard digital imaging system to improve its performance and versatility.
    • Expectation of Success: The combination of these known systems from the same technical field would predictably yield an improved and fully operational microform reader that incorporates the advantages of both references.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5-9, 20-35, 37, 39-41, 43-44, 47, 53-57, 63-68, 74, 79, 81, 84-87, 91-96, and 101 of Patent 9,179,019 as unpatentable.