PTAB

IPR2018-00227

Nikon Corp v. Carl Zeiss AG

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Capture of Sensory Data in Association with Image Data
  • Brief Description: The ’167 patent discloses a digital camera that detects user manipulation (e.g., focus adjustments) prior to capturing a still image. This detection triggers the capture of "sensory data," such as audio or video, which is stored in a temporary buffer. After the still image is captured, a user can select a subset of the buffered sensory data to be permanently stored in association with that image.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-2, 4-16, and 18-27 over Kerns in view of Niikawa

  • Prior Art Relied Upon: Kerns (Patent 5,367,332) and Niikawa (Application # 2001/0043279).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kerns disclosed the core functionality of the challenged claims: a digital camera that uses a two-position shutter button where the first "ready" position initiates the capture of sensory data (audio/video) into a temporary ring buffer. Kerns further taught capturing a still image upon full depression of the shutter and subsequently allowing a user to review and select a subset of the buffered sensory data to save permanently with the image. Petitioner asserted that Niikawa, a more modern digital camera reference, supplied the remaining conventional features recited in various dependent claims. These features included autofocus activated by a partial shutter press, an electronic viewfinder with an eye-proximity sensor, program mode selection, and zoom lens adjustments.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine the teachings of Kerns and Niikawa to create a more integrated and convenient camera. A POSITA would have been motivated to incorporate Kerns's method of initiating sensory data capture and subsequent editing into the more feature-rich camera of Niikawa. This combination was framed as a predictable integration of known features to improve user experience, for example by using the same two-step shutter button to conveniently initiate both autofocus (from Niikawa) and sensory data recording (from Kerns).
    • Expectation of Success: Petitioner argued that a POSITA would have a reasonable expectation of success in making this combination, as it involved applying known techniques to a known device. It was noted that the ’167 patent’s own specification acknowledged that some prior art cameras already utilized a first shutter-release position to initiate audio capture and/or focusing.

Ground 2: Obviousness of Claims 1-2, 4-16, and 18-27 over HP850 in view of Frohlich and Norcross

  • Prior Art Relied Upon: HP850 (HP Photosmart 850 Digital Camera User's Manual), Frohlich (European Patent Pub. No. 1,028,583), and Norcross (Application # 2004/0041922).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the HP850 camera manual disclosed most of the claimed features, including a camera that begins audio recording when the shutter button is pressed halfway down, which also locks focus and exposure. The HP850 also disclosed an eye-start sensor that activates the electronic viewfinder. Petitioner argued that Frohlich supplied the missing element of editing, as it explicitly taught a camera system where a user could edit captured sound clips associated with a still image, for instance by marking and deleting portions. Finally, Norcross was introduced to teach the use of a temporary circular buffer for continuously recording audio, which allows for the preservation of audio from a period immediately preceding the image capture event.
    • Motivation to Combine: Petitioner argued a POSITA would combine these references to improve the functionality of a camera like the HP850. It would have been obvious to add the known audio editing capability from Frohlich to the HP850 to provide users with the desirable ability to modify captured sensory data. To facilitate this editing and the pre-capture recording, a POSITA would be motivated to implement the circular buffer system taught by Norcross, as using RAM for buffering was a well-known technique to improve such devices.
    • Expectation of Success: The combination was presented as the use of known techniques to improve a similar device, which would yield predictable results.

4. Key Claim Construction Positions

  • "detecting manipulation of the camera": Petitioner argued this term, particularly in independent claims 1 and 14, should be given its broadest reasonable construction consistent with the specification. The specification provides numerous examples of "manipulation" that can trigger sensory data capture, including powering on, opening a lens cover, and zooming, in addition to focus adjustments. Therefore, Petitioner contended that the generation of sensory data is not limited to being responsive only to the specifically recited "sensing focus adjustments" and "sensing activation of a viewfinder display."
  • Means-Plus-Function and Nonce Terms: Petitioner dedicated significant argument to the indefiniteness of apparatus claims 14 and 15 under 35 U.S.C. §112. It was argued that several means-plus-function limitations in claim 14 (e.g., "means for sensing activation of a viewfinder display") and corresponding "nonce" terms in claim 15 (e.g., "a detection circuit" configured to perform multiple functions) lacked adequate corresponding structure in the ’167 patent's specification for performing all the recited functions.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-2, 4-16, and 18-27 of the ’167 patent as unpatentable.