Olympus Corporation v. Maxell Ltd.

1. Case Identification

• Case #: To Be Assigned
• Patent #: 8,417,088
• Filed: May 18, 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: 1-4

2. Patent Overview

• Title: Video recording and reproducing method, and video reproducing apparatus and method
• Brief Description: The ’088 patent is directed to an apparatus and method for digitally recording moving and still pictures. The technology's purported novelty involves recording a single still picture using two different encoding methods to ensure compatibility with both dedicated moving picture playback devices and other devices like personal computers.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 3 are anticipated by Ishikawa under 35 U.S.C. §102.

• Prior Art Relied Upon: Ishikawa (Japanese Laid Open Patent Application No. 10-108133).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ishikawa teaches a recording apparatus that captures and records both moving and still images. Ishikawa’s second embodiment discloses a "first encoder" (comprising encoding units 401 and 403) that encodes both moving and still pictures using the same first encoding method, JPEG. For the "second encoder," Petitioner pointed to Ishikawa’s first embodiment, which is explicitly incorporated into the second. This first embodiment teaches encoding a single still image using a "plurality of differing encoding processes" to create files in "two or more formats" for compatibility. Petitioner asserted this teaches applying a second encoding method (e.g., RGB format or an "nth" format) that is different from the first (JPEG). The resulting files from both encoding methods are based on a single captured still image and are recorded as files on a recording medium.

Ground 2: Claims 2 and 4 are obvious over Ishikawa under 35 U.S.C. §103.

• Prior Art Relied Upon: Ishikawa (Japanese Laid Open Patent Application No. 10-108133).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged dependent claims 2 and 4, which require the first encoding method to be MPEG and the second to be JPEG. Petitioner asserted that Ishikawa already teaches using JPEG (fulfilling the second method requirement) and a system where a different first method could be used.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to modify Ishikawa to use MPEG as the first encoding method. By the priority date, MPEG was the predominant standard for moving images, offering significant advantages over using JPEG for video. The ’088 patent itself admits that the JPEG method can be replaced by an MPEG "I picture" (MPEG intra). Given Ishikawa's stated goal of broad compatibility, a POSITA would have found it obvious and desirable to use the best and most common standards for each image type—MPEG for moving pictures and JPEG for high-quality stills.
  • Expectation of Success: As MPEG and JPEG were well-known and compatible industry standards, a POSITA would have had a high expectation of success in substituting MPEG for JPEG for video encoding in Ishikawa's system.

Ground 3: Claims 1-4 are obvious over Takaichi in view of Peters under §103.

• Prior Art Relied Upon: Takaichi (Japanese Laid Open Patent Application No. 10-164483) and Peters (Patent 6,370,274).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Takaichi discloses a camera system that captures moving and still images and identifies the core problem of ensuring compatibility with different playback devices. Peters teaches a direct and detailed solution to this problem. Peters discloses an image coding and recording unit with up to four coding units that can encode a single captured image series into multiple data streams. Specifically, Peters teaches encoding a moving image stream (first data stream) using MPEG and a corresponding still image stream (second data stream) using MPEG intra. These together constitute the "first encoder" using the "first encoding method" (MPEG/MPEG intra). Peters further teaches encoding another still image stream (fourth data stream) using a different method, such as JPEG, which constitutes the "second encoder" and "second encoding method."
  • Motivation to Combine: A POSITA starting with Takaichi's camera and its recognized compatibility problem would be motivated to incorporate the flexible, multi-format encoding scheme taught by Peters. Petitioner asserted that Peters was in the same field of endeavor (image processing) and provided a known technique to solve a known problem. The combination would allow the Takaichi camera to output files compatible with both sophisticated devices (like PCs that can read JPEG) and less-capable devices (like simple video players that can read MPEG), achieving a desirable increase in interoperability.
  • Expectation of Success: Because Peters provides a detailed blueprint for multi-format encoding using standard technologies like MPEG and JPEG, and Takaichi provides a standard camera platform, a POSITA would have had a reasonable expectation of successfully integrating Peters's encoding module into Takaichi's camera to achieve the predictable result of enhanced compatibility.

4. Key Claim Construction Positions

• Petitioner proposed that the term "photographing unit" in claim 1 should be construed as a means-plus-function element under §112, ¶6, as "unit" is a generic nonce word that fails to recite sufficient structure.
• The claimed function was identified as "pick[ing] up a moving picture and a still picture."
• The corresponding structure disclosed in the '088 patent specification was argued to be the optical lens, CCD sensor, driving unit, system control unit, and switch. This construction was central to Petitioner's mapping of the prior art to the claim limitations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that an IPR is appropriate even though Ishikawa was cited during prosecution of the '088 patent.
• The petition asserted that Ishikawa was merely listed in an Information Disclosure Statement without a full English translation and that the examiner never substantively applied its teachings against the claims. Therefore, the Board would be considering the reference and the arguments based on it for the first time.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 of Patent 8,417,088 as unpatentable.