PTAB

IPR2018-00904

Olympus Corporation v. Maxell Ltd.

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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., formerly known as Hitachi Maxell, Ltd.
  • Challenged Claims: 1-14

2. Patent Overview

  • Title: Electric Camera
  • Brief Description: The ’493 patent describes an electric camera with an image sensor capable of operating in different readout modes. It addresses capturing high-resolution still images and high-frame-rate moving images from a single sensor by selectively mixing or culling pixel lines for different operations like previewing, still capture, and video recording.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Misawa ’482 (Patent 5,444,482) and Misawa ’607 (Patent 6,700,607).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Misawa ’482 taught a digital camera with distinct modes for still and movie image capture using a 640x480 pixel sensor. Misawa ’607, from the same inventor and assignee, taught an improved camera with a higher resolution 1280x960 pixel sensor (N=960) and an LCD display with 240 effective scanning lines (M=240). The combination satisfies the N ≥ 3M limitation of independent claim 1. Misawa ’607 taught culling pixel lines for previewing in a static image mode (providing pixel lines at an interval of K1=4), while Misawa ’482 taught mixing/culling pixel lines for recording in a moving video mode using interlaced transfer (providing pixel lines at an interval of K2=2).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings to meet market demand for higher-resolution cameras. It would have been an obvious and predictable upgrade to incorporate the newer, higher-resolution sensor and display from Misawa ’607 into the camera framework of Misawa ’482, especially since both patents share an inventor and assignee (Fuji Photo Film Co.).
    • Expectation of Success: A POSITA would have a high expectation of success because the references teach compatible technologies, specifically interlaced sensor readout and pixel line mixing/culling, making their integration straightforward.

Ground 2: Obviousness over Misawa ’482 and Watanabe ’236 - Claims 1-9 are obvious over Misawa ’482 in view of Watanabe ’236.

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

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented a similar argument to Ground 1, but substituted Watanabe ’236 as the source for the high-resolution components. Misawa ’482 again provided the base camera with its still/movie modes and image stabilization features. Watanabe taught a camera with a 1280x1024 pixel sensor (N=1024) and a 320x240 pixel LCD display (M=240), satisfying the N ≥ 3M limitation. Watanabe taught generating preview images by culling and adding pixels to reduce the pixel count to one-fourth (K1=4), while Misawa ’482’s moving video mode again provided pixel mixing at an interval of K2=2.
    • Motivation to Combine: A POSITA would combine the references to improve the resolution of the older Misawa ’482 camera. Because Misawa ’482 and Watanabe share a common assignee (Fuji Photo Film Co.), a POSITA would look to Watanabe’s compatible high-resolution sensor and display technology for a predictable upgrade.
    • Expectation of Success: Success would be expected because both references teach compatible mechanisms for interlaced sensor readout and pixel line manipulation, making the integration of Watanabe's high-resolution sensor into Misawa '482's camera system straightforward.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claims 10-14. These grounds added Parulski ’218 (Patent 6,292,218) to the combinations of Ground 1 and Ground 2. Parulski was relied upon primarily to teach the method limitation of selecting "recording" and "monitoring" operations "from a list" displayed on the screen, a feature not explicitly taught by the Misawa or Watanabe references.

4. Key Claim Construction Positions

  • "signal processing unit": Petitioner asserted 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 is central to the obviousness arguments. Petitioner argued that because the ’493 patent, unlike related family members, does not separately claim a "driver," the functions of driving the sensor (e.g., to mix or cull charges) must be performed by the claimed "signal processing unit." In the alternative, if the term is found to be a means-plus-function limitation under §112, ¶6, Petitioner identified the corresponding structure in the specification as comprising at least the drive circuit, control circuit, interpolation circuits, and A/D conversion circuit.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under §314(a). A prior IPR on the ’493 patent filed by a different party (ZTE Corp., IPR2018-00236) was denied institution. Petitioner contended that denial was inappropriate here because Olympus was not a party to that prior proceeding and this petition presents new grounds and prior art combinations that were not previously before the Patent Trial and Appeal Board (PTAB).

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-14 of Patent 8,339,493 as unpatentable.