PTAB

IPR2018-00501

Canon Inc v. HS Asset Technology LLC

Key Events

Petition

Title: DIGITAL CAMERA WITH ROTARY SWITCH
Brief Description: The ’614 patent discloses a digital camera with a multi-function rotary switch used to control camera functions. The switch can selectively provide either a clicking tactile feel for adjusting discrete functions (e.g., aperture, shutter speed) or a smooth, non-clicking feel for adjusting continuous functions (e.g., focus, zoom), with a separate state-changing switch to select between the two modes.

Prior Art Relied Upon: Yuge (Application # 2013/0335589).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Yuge disclosed all limitations of the independent claims. Yuge’s "operation unit 37" is a rotary switch that controls camera functions like zoom and aperture. It can switch between two operating states: a "digital operation" state with a clicking feel and an "analog operation" state with a smooth feel. The clicking feel is mechanically generated by a ball (372a) and spring (372g) engaging with notches (371b) on the operation ring. A "switching unit" (e.g., input unit 401) is used to change between the two states. Petitioner contended this switching unit operates "independently of a third function" as it only affects the two assigned functions.

Prior Art Relied Upon: Hayashi (Japanese Patent Publication No. 2014/0178644).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Hayashi disclosed a digital camera with an "operation ring 22a" that functions as a rotary switch. The ring can switch between a "click mode" and a "smooth mode." In click mode, a restricting member (ball 46 and spring 47) engages with teeth (41) on a gear to create a clicking sensation for discrete functions like aperture. In smooth mode, the member disengages to provide smooth rotation for continuous functions like focus. Hayashi's state changing switch is disclosed as either on-screen buttons (e.g., "AV" and "MF" buttons) or a physical switch (51), which switch between the restricted (clicking) and non-restricted (smooth) states.

Prior Art Relied Upon: Yuge (Application # 2013/0335589), Ishigaki (Application # 2008/0197004).
Core Argument for this Ground:
- Prior Art Mapping: Claim 5 requires that the state changing switch enables switching from an "operation setting screen." Yuge disclosed a touch panel display but did not explicitly teach using it to switch the rotary control's tactile state. Ishigaki disclosed a rotary switch with an adjustable clicking feel, and explicitly taught that the feel could be switched "in response to operation of a touch panel."
- Motivation to Combine: A person of ordinary skill in the art (POSA) would combine Yuge and Ishigaki because it was well-known to control camera operations via on-screen menus. A POSA would have been motivated to implement the touch-screen state-switching taught by Ishigaki into Yuge's camera to provide a familiar and advantageous user interface.
- Expectation of Success: The combination would have yielded predictable results, as it merely involved applying a known user interface technique (touch-screen control) to an existing, electrically controlled function in Yuge.
Additional Grounds: Petitioner asserted additional obviousness challenges, including that Claim 6 is obvious over Hayashi in view of Yuge, arguing Yuge taught the claimed sliding switch mechanism not found in Hayashi.

"independently of a third function other than the first and second functions": Petitioner argued for a construction requiring that "the state changing switch does not affect any function other than the first and second assigned functions." This was presented as a negative limitation where the switch must be isolated in its effect to only the two specified functions. Petitioner contended that a broader interpretation, where the switch can affect other functions so long as at least one "third" function remains unaffected, is unreasonable and renders the limitation meaningless. This construction was central to Petitioner's argument regarding the patent's effective filing date.

Loss of Priority Date and AIA Applicability: A central contention was that the ’614 patent is not entitled to its claimed priority dates from a Japanese application (’132 application) or a PCT application. Petitioner argued that neither priority document provided adequate written description for the "independently of a third function" limitation, as construed by Petitioner. The term "independently" was first introduced in the PCT application but only described independence between the state changing switch and the rotary switch's rotation, not independence from other camera functions. Because this limitation allegedly lacked support in the priority documents, Petitioner argued the patent's effective filing date is its U.S. filing date of January 16, 2015. This date is after the March 16, 2013 effective date of the Leahy-Smith America Invents Act (AIA), making the ’614 patent subject to AIA rules and its first-to-file provisions. This, in turn, established Yuge, Hayashi, and Ishigaki as valid prior art under AIA §102.

Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of Patent 9,264,614 as unpatentable.