PTAB

IPR2018-00233

Huawei Device Co Ltd v. Maxell Ltd

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Video Reproducing Method and Apparatus
  • Brief Description: The ’440 patent relates to methods and apparatuses for recording and reproducing digital video and still pictures. The disclosed invention addresses a perceived problem where devices capable of reproducing MPEG-encoded video could not reproduce JPEG-encoded still images, proposing a system that records still pictures in both MPEG and JPEG formats, along with corresponding thumbnail images for user navigation and selection.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 are obvious over Anderson I in view of Anderson II.

  • Prior Art Relied Upon: Anderson I (Patent 6,683,649) and Anderson II (Patent 5,903,309).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Anderson I, which discloses a digital video camera, teaches nearly all elements of the challenged claims. Specifically, Anderson I records MPEG video and JPEG stills onto a mass storage device, reproduces them, displays a plurality of thumbnail images corresponding to the stored media, and plays the full video when a user selects its thumbnail. Petitioner asserted that Anderson I is silent on the specific limitation of recording the thumbnail images themselves onto the storage medium. This deficiency, Petitioner argued, is resolved by Anderson II, which is explicitly cross-referenced within Anderson I. Anderson II teaches recording thumbnail images along with their corresponding main image files to improve the speed at which multiple thumbnails can be displayed, as the system can read the small thumbnail file directly rather than generating it from the larger main file.
    • Motivation to Combine: Petitioner argued that a person of ordinary skill in the art (POSITA) would be motivated to combine the references for several reasons. First, Anderson I explicitly cross-references Anderson II, directing a POSITA to its disclosure. Second, both patents describe similar digital camera technologies and user interfaces, making their teachings readily combinable. Third, Anderson II provides an explicit solution—recording thumbnails—to improve the performance (display speed and power consumption) of the system described in Anderson I, addressing a well-known problem in the art at the time.
    • Expectation of Success: A POSITA would have had a high expectation of success in combining the teachings, as it involved applying a known technique from Anderson II to a known device from Anderson I to achieve the predictable results of faster thumbnail display and improved power efficiency.

Ground 2: Claims 1-8 are obvious over Okuda in view of Anderson I.

  • Prior Art Relied Upon: Okuda (Japanese Application Publication No. H11-176137) and Anderson I (Patent 6,683,649).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Okuda discloses a DVD recorder that performs the core claimed methods, including recording MPEG video, JPEG stills, and their corresponding thumbnails onto a DVD. Okuda further teaches reproducing the media, displaying the thumbnails for user selection, and playing the corresponding full video after a selection is made. However, Petitioner argued that Okuda does not explicitly teach outputting the video signal to an external device. Anderson I was introduced to supply this limitation, as it discloses a digital camera featuring a video out port that allows the device to be connected to an external projector or television, enabling its use as a presentation device.
    • Motivation to Combine: A POSITA would have been motivated to modify the DVD recorder of Okuda with the video out port taught by Anderson I to enhance its functionality and versatility. The combination would allow a user to view recorded content on a larger screen or present it to a group, which is a simple and desirable improvement. Applying the known technique from Anderson I to the known device in Okuda would have been a matter of common sense to improve the device.
    • Expectation of Success: Petitioner contended there was a high expectation of success because the modification involved adding a standard, well-understood component (a video out port) to an existing device to provide a known and predictable benefit.

4. Key Claim Construction Positions

  • The petition argued for constructions of several means-plus-function terms recited in apparatus claims 5 and 7, which were also at issue in a parallel district court litigation.
  • "reproducing means for reproducing..." (claims 5, 7): Petitioner proposed that the claimed function is reproducing media (moving pictures, still pictures, and thumbnails) from a recording medium. Based on the patent’s specification, Petitioner identified the corresponding structure as the combination of the reproducing control unit 118, moving picture expanding unit 120, and thumb nail picture expanding unit 122.
  • "first outputting means" and "second outputting means" (claim 5): Petitioner identified the function of the "first outputting means" as outputting a plurality of thumbnails and the function of the "second outputting means" as outputting a moving picture corresponding to a selected thumbnail. For both terms, Petitioner identified the corresponding structure in the ’440 patent’s specification as the video output terminal 125.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of the ’440 patent as unpatentable.