Olympus Corp v. Maxell Ltd

1. Case Identification

• Case #: IPR2018-00904
• Patent #: 8,339,493
• Filed: June 20, 2018
• Petitioner(s): Olympus Corporation, Olympus Corporation of the Americas, and Olympus America Inc.
• Patent Owner(s): Maxell Ltd.
• Challenged Claims: 1-14

2. Patent Overview

• Title: Electric Camera
• Brief Description: The ’493 patent discloses an electric camera with an image sensor that can be controlled in different readout modes. The modes are optimized for either capturing high-resolution static images by reading out all pixel data, or for recording moving video and providing a live preview by mixing or culling pixel lines to achieve a higher frame rate at a lower resolution.

3. Grounds for Unpatentability

Ground 1: Obviousness over Misawa/Misawa - Claims 1-9 are obvious over Misawa ’482 in view of Misawa ’607.

• Prior Art Relied Upon: Misawa (Patent 5,444,482) and Misawa (Patent 6,700,607).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Misawa ’482 taught a base digital camera capable of capturing both still and movie images using different sensor readout modes. However, it used a low-resolution (640x480) sensor and lacked an LCD preview screen. Misawa ’607, from the same inventor and assignee, taught a modern camera with a high-resolution (1280x960) sensor and an LCD display for previewing images. Petitioner argued that Misawa ’607’s mode for previewing still images, which reads out a fraction of pixel lines (e.g., 1 in 4, K1=4) to increase the refresh rate, met the limitations for "monitoring in a static image mode." The interlaced "field transfer" mode from Misawa ’482, which effectively reads half the pixel lines (K2=2), met the limitations for "recording in a moving video mode." The combination provided all elements of claims 1-9.
  • Motivation to Combine: A POSITA would have been motivated by market demand to upgrade the older camera in Misawa ’482 with the higher-resolution sensor and LCD preview display taught in Misawa ’607. Because the references shared a common inventor and assignee (Fuji Photo Film Co.), a POSITA would have looked to the teachings of Misawa ’607 as a natural and compatible evolution of the technology in Misawa ’482.
  • Expectation of Success: The combination was a predictable integration of known technologies. Both references taught compatible interlaced sensor readout and pixel line mixing techniques, giving a POSITA a reasonable expectation of success in creating a camera with improved resolution and preview capabilities.

Ground 2: Obviousness over Misawa/Misawa/Parulski - Claims 10-14 are obvious over Misawa ’482, Misawa ’607, and Parulski ’218.

• Prior Art Relied Upon: Misawa (Patent 5,444,482), Misawa (Patent 6,700,607), and Parulski (Patent 6,292,218).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address method claims 10-14, which parallel the apparatus claims but add a limitation of selecting operations "from a list." Petitioner argued the base camera functionality was taught by the Misawa combination. Parulski ’218 was added because it explicitly taught a camera with an LCD that displayed a list of functions (e.g., "preview," "capture") that a user could select via reconfigurable buttons. This directly taught the missing "selecting from a list" limitation of independent claim 10.
  • Motivation to Combine: A POSITA would combine Parulski’s display-based list selection with the Misawa camera to improve user interface and manufacturability. This approach would replace cumbersome hardware-based mode selection (dials or dedicated buttons) with a more flexible, cost-effective, and user-friendly software-driven menu, which was a known design goal at the time.
  • Expectation of Success: Integrating a menu-based control system as taught by Parulski into a digital camera was a well-understood and straightforward design choice for a POSITA.

Ground 3: Obviousness over Misawa/Watanabe - Claims 1-9 are obvious over Misawa ’482 in view of Watanabe ’236.

• Prior Art Relied Upon: Misawa (Patent 5,444,482) and Watanabe (Patent 6,529,236).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative to Ground 1. Similar to Misawa ’607, Watanabe ’236 taught a camera with a high-resolution (1280x1024) sensor and an LCD display. Watanabe explicitly taught generating a high-refresh-rate preview image by driving the sensor to "add[] each two nearby pixels in the vertical direction" (a "one-half partial pixel read mode") or to add pixels to reduce the number to one-fourth (a "one-quarter partial pixel read mode"). Petitioner argued this taught mixing/culling pixel lines at an interval of K1=4 for monitoring, while Misawa ’482 provided the moving video mode with an interval of K2=2.
  • Motivation to Combine: The motivation was the same as in Ground 1: to upgrade the camera of Misawa ’482 to meet market expectations for higher resolution and live preview functionality. As Misawa ’482 and Watanabe ’236 shared a common assignee (Fuji Photo Film Co.), combining their teachings was a predictable design choice.
  • Expectation of Success: A POSITA would have found the substitution of Watanabe’s high-resolution sensor and readout methods into Misawa’s camera to be simple and straightforward, with a high likelihood of success.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 10-14 based on the combination of Misawa ’482, Watanabe ’236, and Parulski ’218, which relied on the same rationale as Ground 2 for adding Parulski’s list-based selection method.

4. Key Claim Construction Positions

• "signal processing unit": Petitioner argued this term should be construed as a "unit that drives an image sensing device and performs signal processing on the output of the image sensing device." This construction was asserted to be necessary because the ’493 patent, unlike related patents in its family, does not separately claim a "driver." Instead, it assigns the functions of both driving the sensor (to mix or cull charges) and processing its output signals to the single claimed "signal processing unit."

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) would be inappropriate. Petitioner noted that a previous IPR on the ’493 patent (IPR2018-00236) had been filed by an unrelated party, ZTE Corp., and was denied institution. Petitioner contended that it had no contact with ZTE, that this petition challenged all claims (1-14) rather than just claims 5 and 6, and that it presented new prior art and invalidity grounds that were not previously before the Patent Trial and Appeal Board.

7. Relief Requested

• Petitioner requested institution of an IPR trial and cancellation of claims 1-14 of the ’493 patent as unpatentable.