PTAB

IPR2018-00911

Olympus Corp v. Maxell Ltd

Key Events

Petition

petition

Case #: IPR2018-00911
Patent #: 7,457,529
Filed: May 18, 2018
Petitioner(s): Olympus Corporation, Olympus Corporation of the Americas, and Olympus America Inc.
Patent Owner(s): Maxell Ltd.
Challenged Claims: 1-3, 7-12, 17-25, and 33-38

Title: Video recording method and apparatus
Brief Description: The ’529 patent discloses a method and apparatus for digitally recording both moving and still pictures. The core inventive concept involves encoding a single still picture using two different methods to ensure compatibility with playback devices designed for moving pictures (e.g., MPEG) as well as devices designed for still pictures (e.g., JPEG).

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 discloses every element of the challenged independent claims. Ishikawa teaches a camera that can record both moving pictures and still pictures. It explicitly discloses recording moving pictures using a first encoding method (JPEG) and recording still pictures using a plurality of different methods (e.g., JPEG and RGB format), which meets the limitation of a "second encoding method which is different from the first." Crucially, Ishikawa also teaches encoding still images using the same method as moving images (JPEG) to ensure compatibility, which Petitioner contended satisfies the "whereby" clause of claim 1 requiring that a video player enabled for the first method can decode the second still pictures.
- Key Aspects: Petitioner noted that the ’529 patent itself cites Ishikawa in its background section and acknowledges it teaches encoding pictures with a plurality of different methods.

Prior Art Relied Upon: Ishikawa (Japanese Laid Open Patent Application No. 10-108133).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the teachings of Ishikawa, which uses JPEG for both moving and still images. Petitioner asserted that at the time of the invention, MPEG was the predominant and technically superior standard for encoding moving pictures, while JPEG was the standard for still pictures. Ishikawa’s stated goal was to allow image data to be easily read by devices with "different types of environments."
- Motivation to Combine: A POSITA would have been motivated to modify Ishikawa’s system by substituting the industry-standard MPEG format for JPEG when encoding moving pictures. This modification would be a simple and predictable substitution to improve video quality and broaden compatibility with the many MPEG-compliant playback devices in the market, directly furthering Ishikawa’s own stated objectives.
- Expectation of Success: Both MPEG and JPEG were well-known, mature standards. A POSITA would have had a high expectation of success in implementing an MPEG encoder for video streams and a JPEG encoder for still images within the framework disclosed by Ishikawa.

Prior Art Relied Upon: Peters (Patent 6,370,274).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Peters teaches a system for flexibly recording moving and still images using various methods to ensure broad compatibility. Peters discloses an image coding unit that generates multiple data streams from a single source. Specifically, a "first coding unit" encodes moving pictures using MPEG (the "first encoding method"), and a "fourth coding unit" encodes still pictures using a different method like JPEG (the "second encoding method"). Furthermore, Peters’ "second coding unit" encodes still pictures using MPEG-INTRA, which is functionally the same as the first (MPEG) method. This directly maps to the claim requirement of recording a "second still picture" with the first encoding method, thereby ensuring it can be decoded by a standard MPEG video player.
Additional Grounds: Petitioner asserted additional obviousness challenges against claims 7, 8, 18, and 33-37 over Peters, arguing that varying the recording order of the data streams taught by Peters would have been an obvious design choice to a POSITA seeking to minimize access time. Further grounds argued that claims 10, 17, 23, and 36, while lacking written description support, were nonetheless obvious over Ishikawa or Peters in view of a POSITA's knowledge.

Unsupported Conversion Obviousness: Petitioner contended that claims 10, 17, 23, and 36 require encoding a "first still picture" from a "second still picture" after the second picture has already been encoded. For example, creating a JPEG image from an already-encoded MPEG image. Petitioner argued that while the ’529 patent provides no written description for this functionality, a POSITA would have known a straightforward, albeit inefficient, method to accomplish this. This method involved decoding the second still picture (e.g., the MPEG file) back to its raw image data and then applying the second encoding method (e.g., JPEG) to re-encode the raw data, rendering the claims obvious.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 7-12, 17-25, and 33-38 of the ’529 patent as unpatentable.