PTAB

IPR2018-00499

Canon Inc v. HS Asset Technology LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Digital Camera with Rotary Switch
  • Brief Description: The ’614 patent discloses a digital camera featuring a multi-function rotary switch to control various operations. The core concept is a state-changing switch that toggles the rotary switch between a "restricted state" with a mechanical clicking feel, suitable for discrete functions like aperture, and a "non-restricted state" with a smooth, non-clicking feel for continuous functions like focus. During prosecution, allowance was obtained after claims were amended to specify that the clicking feel is generated mechanically through the engagement of a restricting member with troughs on the rotary switch.

3. Grounds for Unpatentability

Petitioner presented grounds organized around two distinct interpretations of the claims. Ground 1 addressed the Patent Owner's alleged litigation position where the state-changing switch only alters the tactile feel. Grounds 2-4 addressed Petitioner's interpretation where the switch changes both the feel and the assigned function of the rotary switch.

Ground 1: Obviousness over Tanaka and Tesch - Claims 1, 2, 4, and 7-9 are obvious over Tanaka in view of Tesch.

  • Prior Art Relied Upon: Tanaka (Japanese Application Publication No. 2011/39385) and Tesch (Patent 2,906,188).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tanaka disclosed a digital camera with a multi-function rotary switch that can be assigned to control both discrete (shutter speed) and continuous (focus) functions, and which inherently uses a mechanical structure (a spring-pressed ball engaging openings) to generate a clicking feel. Tesch was argued to disclose a simple, purely mechanical switch for the express purpose of changing a camera control ring from a clicking feel to a smooth, non-clicking feel by mechanically blocking and unblocking a similar restricting detent, without affecting the ring's function.
    • Motivation to Combine: A POSA would have been motivated to add Tesch's feel-switching mechanism to Tanaka's multi-function ring. This combination would achieve the well-known advantage of matching the control's tactile feedback to the function being adjusted, a desirable feature for user experience. Since Tanaka’s ring already controlled continuous functions, adding the ability to switch to a smooth feel via Tesch's known mechanism was a predictable design improvement.
    • Expectation of Success: The proposed combination involved integrating two compatible, well-understood mechanical systems for camera control rings, making success simple, obvious, and predictable.

Ground 2: Obviousness over Kawaji and Mikamo - Claims 1-4, 7, and 9 are obvious over Kawaji in view of Mikamo.

  • Prior Art Relied Upon: Kawaji (Japanese Application Publication No. 2003/177294) and Mikamo (Application # 2003/0160891).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Kawaji disclosed a digital camera where a single rotary switch toggles between two modes: an "AF-only mode" with a clicking feel for command functions (e.g., aperture), and an "AF/MF mode" with a smooth feel for manual focus. While Kawaji taught switching both feel and function, it only vaguely disclosed "means for click-making" and did not show a specific mechanical structure. Mikamo was argued to remedy this by disclosing a specific, switchable mechanical click structure for a camera's rotary ring, comprising a tongue that engages a ring gear to create a clicking feel.
    • Motivation to Combine: A POSA implementing Kawaji's system would have been motivated to consult the art for a known mechanical structure to embody the "means for click-making." Mikamo, which addresses the same problem of providing selectable clicking on a camera's rotary ring, provided an obvious and compatible mechanical solution (tongue and ring gear) to integrate into Kawaji's system, thereby fulfilling the patent’s mechanical clicking limitation that was key to allowance.
    • Expectation of Success: Both references describe mechanical controls for camera rotary rings, so a POSA would have had a high expectation of successfully combining Mikamo's specific mechanical implementation with Kawaji's broader functional system.

  • Additional Grounds: Petitioner asserted further obviousness challenges building on the Kawaji and Mikamo combination. One ground added Ishigaki (Application # 2008/0197004) to teach an on-screen GUI for state switching and a detailed spring-and-detent mechanism, rendering claims 5 and 8 obvious. Another ground added Nakao (Japanese Utility Model Publication No. JPS4927439) to teach a push-pull sliding operation for the rotary switch, rendering claim 6 obvious.

4. Key Claim Construction Positions

  • "Independently of a third function": Petitioner argued this critical limitation requires that the state-changing switch must not affect any function other than the two specifically assigned to the rotary switch states. Petitioner contrasted this with the Patent Owner's alleged broader interpretation that the switch need only be independent of some unrelated third function (e.g., a flash button), which Petitioner contended was an unreasonable construction.
  • "Rotary switch": Petitioner proposed this term be construed as a "rotating switch having a surface with depressions or troughs and having components that detect rotation to output values to control a function." This construction was argued to be consistent with the patent's disclosure of a mechanical click mechanism and an associated encoder.
  • "Function": Petitioner argued this term should be broadly construed as "an operation," based on the varied examples provided in the ’614 patent specification, including focusing, zooming, and image playback.

5. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and cancel claims 1-9 of Patent 9,264,614 as unpatentable.