RPX Corp v. deshodax LLC

1. Case Identification

• Case #: IPR2018-00280
• Patent #: 7,307,398
• Filed: December 12, 2017
• Petitioner(s): RPX Corporation
• Patent Owner(s): Deshodax, LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Image Processing Device and Method for Controlling a Motor System
• Brief Description: The ’398 patent describes an image processing device, such as a scanner or printer, with a motor system for moving a module. The purported novelty is the use of a plurality of selectable "loading circuits" to control the power delivered to the motor, thereby allowing for different operational speeds based on user-selected resolution.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chang - Claims 1-2, 4-6, 8-9, and 11-12 are obvious over Chang.

• Prior Art Relied Upon: Chang (Patent 6,414,461).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chang, which is directed to a scanner, discloses every element of the challenged claims. Chang teaches an image processing device with a scanning module moved by a stepping motor system. Crucially, Chang discloses a "plurality of loading circuits" (resistors R1, R2, R3) that control the current to the motor. It also discloses a "selector" (transistors M1, M2) controlled by a "control circuit" that selects which loading circuit to use based on the desired scanning resolution (e.g., lowest, normal, highest), thereby controlling the motor's torque and speed.
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument was that Chang inherently contains all claim elements, rendering a combination unnecessary.
  • Expectation of Success (for §103 grounds): Not applicable for a single-reference ground.

Ground 2: Obviousness over Kaneko and Tanaka - Claims 1, 3-6, 8, and 10-12 are obvious over Kaneko in view of Tanaka.

• Prior Art Relied Upon: Kaneko (Patent 6,040,670) and Tanaka (Patent 5,207,520).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kaneko discloses a printer with a stepping motor and a controller that provides "four level current control" to achieve different printing speeds based on resolution, but does not detail the specific circuitry for this control. This system includes the basic elements of claim 1, such as a first module (cartridge receptacles), motor, and driver. Tanaka discloses a compatible and more detailed current control system for a printer motor that uses a plurality of loading circuits (resistors) and a selector circuit to precisely control motor torque based on selected speed modes. Petitioner argued that Tanaka provides the specific "plurality of loading circuits" and "selector" missing from Kaneko.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Tanaka's detailed current control system with Kaneko's printer to implement Kaneko's high-level goal of multi-level current control. The combination would predictably improve Kaneko's performance by providing better torque management, reducing unwanted vibrations, and allowing for more speed options, which were all known objectives in the art of printer design.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success because the systems were highly compatible. Both references address controlling motors in printers, and Tanaka’s detailed circuit is a well-understood implementation for the type of control described conceptually in Kaneko.

Ground 3: Obviousness over Kaneko, Tanaka, and Jung - Claims 2 and 9 are obvious over Kaneko and Tanaka in view of Jung.

• Prior Art Relied Upon: Kaneko (Patent 6,040,670), Tanaka (Patent 5,207,520), and Jung (Patent 6,147,777).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically targeted dependent claims 2 and 9, which require the "first module" to be a "scanning module." The primary combination of Kaneko and Tanaka teaches an improved printing system. Jung was introduced because it discloses a conventional multi-functional device that includes both a printer module and a scanner module mounted on the same motor-driven carriage.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to incorporate the scanning functionality taught by Jung into the improved motor control system of Kaneko/Tanaka. Multi-function printer/scanner devices were well-known and commercially desirable to reduce cost and physical footprint for consumers. It would have been a simple design choice to apply the advanced motor control system to a device that could perform both printing and scanning.
  • Expectation of Success (for §103 grounds): Success would be expected because similar motor systems were used in both printers and scanners. Applying a known motor control technique to a known dual-function device would have yielded predictable results.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claim 7 over Chang and Buckley (Ground 2); claims 1-6 and 8-12 over Kaneko and Chang (Ground 3); and claim 7 over Kaneko, Tanaka, and Buckley (Ground 6), relying on similar principles of combining known motor control circuits.

4. Key Claim Construction Positions

• "Loading Circuit": Petitioner proposed this term be construed as "any electrical circuit or component that alters the power supplied to a motor, such as by controlling the current to the motor." This broad construction was argued to be supported by the specification's functional description and would encompass simple, well-known components like resistors, as disclosed in the prior art.
• "Selector … capable of selecting a loading circuit": Petitioner argued this term should be construed as "an electrical circuit that selects and sets a loading circuit to provide a desired power input to the motor system." Critically, Petitioner contended that the specification does not require the "selector" and "controller" to be physically separate components, allowing a single control circuit, as shown in the prior art, to perform both functions.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of the ’398 patent as unpatentable.