PTAB

IPR2017-02113

Quantificare Inc v. Procter & Gamble Co

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Skin Imaging and Analysis Systems and Methods
  • Brief Description: The ’003 patent describes systems and methods for electronically analyzing digital images of skin to locate visual defects, determine a numerical severity for those defects, and generate a comparison of that severity against data from a population of people or against the same person's data over time.

3. Grounds for Unpatentability

Ground 1: Reconsideration of Prosecution History - Claims 1-4, 8, 9, 11, 12, 14, 38-41 are obvious over Smith

  • Prior Art Relied Upon: Smith (WO 97/47235).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the allowance of the challenged claims stemmed from an error during prosecution where the Examiner concluded that Smith failed to teach comparing a skin defect’s severity to a “population of people.” Smith, however, expressly taught a method for diagnosing the stage of a skin disease by comparing it to a “database including information such as reference bitmaps and parameters relating to known pathological cases.” Petitioner contended this database of known cases is inherently a population, and its use for comparison to diagnose a patient’s condition meets the key limitation of the independent claims.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument focused on the assertion that Smith taught all claim elements. Petitioner argued that the Examiner correctly found Smith taught acquiring and analyzing a digital image to determine skin defect severity, and that the allowance hinged solely on the allegedly missing “comparison to a population” step, which Petitioner asserted Smith actually disclosed.
    • Key Aspects: This ground centered on correcting a perceived substantive error made during original prosecution, arguing that a proper reading of Smith’s disclosure of a diagnostic database renders the claims obvious.

Ground 2: Obviousness over Dermatological Scoring and Computer Automation - Claims 1-4, 8, 9, 11, 12, 14, 15, 38-41 are obvious over Nachbar in view of Aitken

  • Prior Art Relied Upon: Nachbar (a 1994 journal article on dermatoscopy) and Aitken (a 1996 journal article on computer image analysis of skin lesions).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Nachbar taught the fundamental, non-electronic method of claim 1 for pigmented skin lesions (nevi). Nachbar disclosed locating nevi, determining a numerical severity using the "ABCD score," and comparing that score to a predetermined threshold ("5.45") derived from a population of 172 patients to assess malignancy risk. Aitken taught the automation of this exact process, disclosing a method for capturing digital images of nevi and using computer image analysis to electronically evaluate their numerical severity to monitor changes over time.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Nachbar's established clinical scoring method with Aitken's computerized analysis to achieve greater objectivity, accuracy, and efficiency in evaluating pigmented lesions. This goal was inherent in the field and explicitly addressed by Aitken's work on the reliability of computer analysis.
    • Expectation of Success: A POSITA would have had a high expectation of success, as Aitken had already demonstrated a functional system for the computerized numerical analysis of the same type of skin lesions (nevi) discussed in Nachbar. The combination was merely applying a known automation technique to a known manual diagnostic process.

Ground 3: Obviousness over Acne Grading and Computer Automation - Claims 1-4, 8, 9, 11, 12, 14, 15, 30, 32-41 are obvious over Cunliffe in view of Pelfini

  • Prior Art Relied Upon: Cunliffe (a 1979 journal article on acne grading) and Pelfini (a 1988 journal article on computerized analysis of acne).

  • Core Argument for this Ground:

    • Prior Art Mapping: Cunliffe, published two decades before the ’003 patent’s filing, taught a manual method for grading facial acne severity (the "Leeds acne grading system") and comparing an individual's score to population data stratified by age and gender using prevalence graphs. Pelfini taught a computerized method to compute the numerical severity of acne from a digital image, specifically to eliminate the subjectivity of manual clinical evaluations and to track changes over time.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to apply Pelfini's computerized analysis method to the widely recognized Cunliffe grading system. The motivation, as stated in Pelfini, was to replace subjective manual assessments with objective, quantitative, and reproducible electronic analysis.
    • Expectation of Success: Success would have been expected because Pelfini had already proven the concept of using computerized image analysis to quantify acne lesions from digital images. Applying this known electronic technique to automate Cunliffe's well-defined manual grading system would have been a predictable implementation.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations based on Lievin (for automatic lip feature extraction) and Lobo (Patent 5,781,650, for automatic facial feature detection and wrinkle analysis), but relied on the same core theory of automating known dermatological practices or combining known image analysis techniques.

4. Key Technical Contentions (Beyond Claim Construction)

  • Automation of Known Human Practices: A central theme of the petition was that the ’003 patent claimed the mere automation of long-standing, routine, and well-documented practices of dermatologists. Petitioner argued that replacing manual inspection with a digital camera, human evaluation with known computer algorithms, and mental comparison with standard percentile calculations on a generic computer does not confer patentability, particularly in a "post-Alice" legal landscape.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 8, 9, 11-15, and 30-41 of the ’003 patent as unpatentable.