PTAB

IPR2017-01188

Samsung Electronics America Inc v. Prisua Engineering Corp

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1. Case Identification

2. Patent Overview

  • Title: Video Enabled Digital Devices for Embedding User Data in Interactive Applications
  • Brief Description: The ’591 patent is directed to a system that creates an edited, composite video by digitally substituting a portion of an original video data stream with an image from a user-provided input video data stream, such as replacing a face in a video with a user’s photograph.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 8, and 11 are anticipated by or obvious over Senftner

  • Prior Art Relied Upon: Senftner (Patent 7,460,731).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Senftner, which is titled “Personalizing a video,” discloses a complete system for creating personalized videos through partial image replacement. Senftner allegedly teaches every limitation of independent claims 1 and 11 by describing a process to replace an “original actor” (the first image) in an original video with a “new actor” (the second image) provided by a user. Petitioner asserted that Senftner's system performs all the requisite steps: capturing a user input image, selecting a target image in an original video, extracting both, spatially matching them, and performing the substitution to create an edited video. Petitioner further contended that Senftner explicitly discloses replacing an original actor's face (meeting claim 8) and computing and applying motion vectors to maintain motion continuity (meeting claim 2).
    • Key Aspects: Petitioner argued that Senftner's detailed description of overwriting original video data on a pixel-by-pixel and frame-by-frame basis with new data directly corresponds to the substitution process claimed in the ’591 patent.

Ground 2: Claims 3 and 4 are obvious over Senftner in view of Levoy

  • Prior Art Relied Upon: Senftner (Patent 7,460,731) and Levoy (Application # 2009/0309990).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims 3 and 4, which add limitations requiring the digital processing unit to extract pixels based on a user "entering data in the data entry display device" (claim 3) or "pointing to a spatial location in a displayed video frame" (claim 4). Petitioner asserted that Senftner teaches the foundational video substitution system, including the use of various computing devices like tablets and personal digital assistants (PDAs). While Senftner does not explicitly require a touch screen, Levoy describes systems for image editing on mobile devices where a user selects image fragments for a composite image by tapping on a touch screen display.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to combine the technologies because both references address the same fundamental process of image substitution. A POSITA would have found it obvious to implement Senftner’s video personalization system on a device with a touch screen, as taught by Levoy, to provide a more natural, user-friendly, and efficient interface for selecting images and portions of images, which was a well-known design choice at the time.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining a known touch screen interface (Levoy) with a known video editing system (Senftner), as it represented the simple application of a conventional user interface to an existing process to improve its usability.

Ground 3: Claims 1, 2, 8, and 11 are obvious over Sitrick

  • Prior Art Relied Upon: Sitrick (Application # 2005/0151743).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Sitrick discloses a system functionally identical to that claimed in the ’591 patent. Sitrick describes a "user image video processing and integration subsystem" that integrates a user-selected image into a predefined video presentation in place of a tracked portion. Petitioner mapped this directly to the claims, arguing Sitrick's "tracked portion" (e.g., a face) is the "first image" extracted from the original video, and the "user specified image" is the "second image" that replaces it. Sitrick allegedly discloses using a general-purpose computer to perform the compositing, which would inherently contain the claimed digital processing unit, data entry, and display devices. Petitioner also argued Sitrick teaches computing motion vectors via MPEG encoding to track objects (meeting claim 2) and explicitly shows replacing a facial image (meeting claim 8).

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 3 and 4 over Sitrick in view of Levoy, relying on the same motivation to combine a touch screen interface (Levoy) with a base video substitution system (Sitrick).

4. Key Claim Construction Positions

  • Petitioner argued that the term “digital extraction” (and its variants) should be construed as “to digitally select and separate out, such as by copying.” This construction was central to the invalidity arguments, as the prior art frequently describes copying image data rather than "cutting" or removing it from the source stream. Petitioner supported this by noting that the ’591 patent specification itself repeatedly uses the word “substitution” rather than “extraction” and provides no disclosure that would require the destructive removal of pixels from the original data stream.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 8, and 11 of Patent 8,650,591 as unpatentable.