PTAB

IPR2018-00906

Olympus Corporation v. Maxell Ltd.

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1. Case Identification

  • Patent #: 7,995,897
  • Filed: May 18, 2018
  • Petitioner(s): Olympus Corporation, Olympus Corporation of the Americas, and Olympus America Inc.
  • Patent Owner(s): Maxell Ltd.
  • Challenged Claims: 1-12

2. Patent Overview

  • Title: Video Recording and Reproducing Apparatus and Method
  • Brief Description: The ’897 patent is directed to an apparatus and method for digitally recording and reproducing moving and still pictures. The invention purports to solve compatibility issues by recording still pictures with multiple different encodings and using a common encoding method for low-resolution thumbnails of both moving and still pictures.

3. Grounds for Unpatentability

Ground 1: Claims 4-6 and 10-12 are anticipated under 35 U.S.C. §102 over Takaichi.

  • Prior Art Relied Upon: Takaichi (Japanese Laid Open Patent Application No. 10-164483).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Takaichi, which was not before the Examiner during prosecution, discloses every element of the challenged apparatus and method claims. Takaichi teaches an image data storage device that captures both moving pictures (e.g., via MPEG, the "first encoding method") and still pictures (e.g., via JPEG, the "second encoding method"). It further discloses generating and recording corresponding low-resolution "index image data" (thumbnails) for both types of pictures using a common method (JPEG). Petitioner contended that Takaichi’s system for displaying these thumbnails and then, upon user selection, displaying the corresponding full-size moving or still picture constitutes the claimed "reproducer" and "output unit." Takaichi’s "index image data" for moving and still pictures was mapped to the claimed "first pictures" and "second pictures," respectively.

Ground 2: Claims 1-3 and 7-9 are obvious under 35 U.S.C. §103 over Takaichi in view of Ishikawa.

  • Prior Art Relied Upon: Takaichi (Japanese Laid Open Patent Application No. 10-164483) and Ishikawa (Japanese Laid Open Patent Application No. 10-108133).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Takaichi teaches nearly every limitation of these claims but does not explicitly disclose the key feature: recording a "second still picture" that is encoded using the same method as the moving pictures (i.e., the "first encoding method," such as MPEG). This feature is intended to allow a playback device capable of decoding only moving pictures (e.g., an MPEG-only player) to also display a still picture. Petitioner argued that Ishikawa supplies this missing teaching. Ishikawa, which the ’897 patent acknowledges as prior art, explicitly addresses device compatibility by teaching the encoding of a single still image using a "plurality of differing encoding processes." This allows the same image data to be read and reproduced by devices having different capabilities.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to combine Ishikawa’s flexible, multi-format encoding solution with Takaichi’s foundational system to solve the well-known and commercially significant problem of interoperability. Both references are in the same field of image data capture and storage and address similar challenges. The motivation was to enhance Takaichi's system with Ishikawa's known solution for compatibility, allowing a still picture (natively encoded in JPEG) to also be encoded in an MPEG-compatible format (such as an MPEG intra-frame) for playback on MPEG-only devices.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination. The modification involved implementing a known, flexible encoding scheme into a compatible system to achieve the predictable and desirable benefit of improved device compatibility. The petition argued this was a straightforward application of known techniques to solve a known problem.

4. Key Claim Construction Positions

  • Petitioner argued the term "output unit," recited in independent claims 4 and 7, should be construed as a means-plus-function element under §112, ¶6, because it fails to recite sufficiently definite structure for performing its claimed function.
  • Function: The recited function is outputting a plurality of reproduced thumbnails for both moving and still pictures, and upon user selection of a thumbnail, outputting the corresponding full-size reproduced moving or still picture.
  • Corresponding Structure: Petitioner identified the corresponding structure disclosed in the ’897 patent’s specification as the combination of "video processing unit 124, video output terminal 125, system control unit 128 and input buttons 129." This proposed construction was central to Petitioner's anticipation and obviousness arguments, as it allowed for a direct mapping of the structures disclosed in the Takaichi reference to this claim limitation.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 1-12 of Patent 7,995,897 as unpatentable.