Digital Check Corp v. E ImageData Corp

1. Case Identification

• Case #: IPR2017-00346
• Patent #: 9,197,766
• Filed: November 30, 2016
• Petitioner(s): Digital Check Corp. d/b/a ST Imaging
• Patent Owner(s): E-ImageData Corp.
• Challenged Claims: 41-43, 46, 49, 53, and 54

2. Patent Overview

• Title: Microform Imaging Apparatus
• Brief Description: The ’766 patent describes a digital microform imaging apparatus purported to be more compact and versatile than prior art. The invention centers on a support structure with two cavities forming a horizontal gap, an illumination source, a fold mirror, a movable area sensor, and a movable lens, all arranged to digitize microform media.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fujinawa and Minolta - Claims 41-43, 46, 49, 53, and 54 are obvious over Fujinawa in view of Minolta.

• Prior Art Relied Upon: Fujinawa (Application # 2004/0012827) and Minolta (Minolta UC-1 Universal Film Carrier and Parts Manual).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fujinawa, a digital image reading apparatus, discloses nearly every element of independent claims 41 and 49. This includes a support structure forming first and second cavities with a gap, an illumination source in the first cavity, a fold mirror in the second cavity to redirect light along a second optical axis, and an area sensor and lens that are independently movable along that second axis. Petitioner contended that Fujinawa arguably lacks a microform media support structure capable of movement in both longitudinal and transverse directions. This limitation, however, is taught by Minolta, which discloses a universal film carrier designed for precisely this type of multi-directional movement to accommodate various microform formats like roll film and microfiche.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Minolta with Fujinawa to enhance the versatility of Fujinawa’s reader. Minolta was explicitly designed as a universal carrier to work with a variety of reader/printers, making it a logical and easily substitutable component to improve a base reader’s functionality. The combination would predictably result in a more versatile microform reader capable of handling multiple media types, a well-understood goal in the field.
  • Expectation of Success: Combining a universal film carrier with a microform reader was a common and straightforward modification in the art. A POSITA would have a high expectation of success in integrating Minolta's carrier into Fujinawa's apparatus to achieve the predictable benefit of increased media compatibility.

Ground 2: Obviousness over Fujinawa, Minolta, and Wally - Claims 41-43, 46, 49, 53, and 54 are obvious over Fujinawa in view of Minolta and Wally.

• Prior Art Relied Upon: Fujinawa (Application # 2004/0012827), Minolta (Minolta UC-1 Universal Film Carrier and Parts Manual), and Wally (Patent 5,574,577).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated all arguments from Ground 1. Petitioner introduced Wally solely to provide an additional, explicit teaching for the claim limitation requiring the movement ranges of the area sensor and lens to overlap. While arguing Fujinawa already discloses at least some overlap, Petitioner asserted that Wally provides a clear disclosure of a lens and image sensor with separate drive means (drive screws) that allow for a more pronounced and controllable overlapping range of motion along an optical axis.
  • Motivation to Combine: A POSITA seeking to improve the focus and zoom adjustments of the combined Fujinawa/Minolta device would look to other known drive mechanisms in the field. Wally taught a side-by-side drive screw arrangement that provided more precise control over the relative positions of the lens and sensor. A POSITA would be motivated to modify Fujinawa’s in-line worm gear mechanism with Wally’s taught arrangement to enhance image quality, a predictable improvement.
  • Expectation of Success: Modifying the drive mechanism for optical components was a well-known design choice. Implementing a different, known drive screw configuration to achieve better focus and zoom control was a predictable modification with a high expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that institution is warranted under 35 U.S.C. § 325(d) because the petition relies on new obviousness combinations that were not considered during the original examination of the ’766 patent. Furthermore, Petitioner submitted an expert declaration to explain the prior art landscape and provide necessary context for the proposed combinations, which was not available to the examiner.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 41-43, 46, 49, 53, and 54 of the ’766 patent as unpatentable under 35 U.S.C. §103.