PTAB

IPR2018-00911

Olympus Corporation v. Maxell Ltd.

Case #: To Be Assigned
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 relates to a method and apparatus for recording both moving and still pictures on a single medium. The purported invention addresses compatibility issues by recording a still picture using two different encoding methods—one for still image devices (e.g., JPEG for a PC) and another compatible with moving picture players (e.g., MPEG)—and also discloses recording thumbnail images.

Prior Art Relied Upon: Ishikawa (Japanese Application # 10-108133).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Ishikawa disclosed a camera capable of recording moving and still images to a recording medium. Independent claim 1 requires recording (a) moving pictures with a first encoding method, (b) "first still pictures" with a second, different method, and (c) "second still pictures" with the first method, allowing a moving picture player to decode them. Petitioner asserted that Ishikawa’s second embodiment taught recording moving pictures in JPEG format (the first method) and also taught incorporating its first embodiment’s functionality, which included encoding a still image into multiple formats, such as a different RGB format (the second method), thus satisfying elements (a) and (b). Crucially, Ishikawa also taught that when recording a still image, it could be recorded "in the same manner as the first encoding unit," i.e., in JPEG format, to ensure compatibility, thus satisfying element (c).

Prior Art Relied Upon: Ishikawa (Japanese Application # 10-108133).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon Ground 1 to address various dependent claims. For claim 2, which specified the first method is MPEG and the second is JPEG, Petitioner argued that at the time of invention, MPEG was the predominant standard for moving pictures and JPEG for still pictures. A person of ordinary skill in the art (POSITA) would have found it an obvious and beneficial modification to use these well-known, optimized standards in Ishikawa's flexible encoding framework. For claim 3, which adds recording smaller "third pictures" (thumbnails), Petitioner asserted Ishikawa explicitly taught generating and recording thumbnail data for both moving and still images for display purposes.
- Motivation to Combine (for §103 grounds): A POSITA would combine these known standards with Ishikawa's system to improve performance and ensure the widest possible compatibility with existing playback devices, which aligned with Ishikawa's own stated goal "to allow photographed image data to be easily read and reproduced."
- Expectation of Success (for §103 grounds): Success was predictable because MPEG and JPEG were mature, standardized, and widely implemented technologies for their respective purposes.

Prior Art Relied Upon: Peters (Patent 6,370,274).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Peters disclosed a system for flexibly recording moving and still images using various methods to facilitate compatibility. Peters explicitly taught encoding moving images as a "first data stream" using MPEG. It also disclosed encoding "first still pictures" as a "fourth data stream" using a different method like JPEG or Photo-CD. Finally, Peters taught encoding "second still pictures" as a "second data stream" using MPEG-INTRA, which is the same MPEG encoding family as the moving pictures, to ensure a device that can play one can play both. Petitioner argued this directly anticipated the limitations of independent claims 1 and 20, as well as dependent claims like 2 and 21 that specified the MPEG/JPEG combination.
Additional Grounds: Petitioner asserted additional challenges, including that claims 7, 8, 18, 33, 34, and 37 were obvious over Peters based on its teachings that the recording order of data streams could be varied. Other grounds argued that claims 10, 17, 23, and 36 were obvious over both Ishikawa and Peters in view of a POSITA's knowledge of decoding and re-encoding images.

Petitioner argued that because the ’529 patent was set to expire within 18 months of the petition filing, its claims should be given their plain and ordinary meaning under the Phillips standard, not the broader reasonable interpretation standard. This position was noted as consistent with a claim construction order entered in a related district court case involving parent patents. No specific term constructions were proposed as central to the petition; rather, the focus was on the application of the overall Phillips framework.

A key contention targeted claims 10, 17, 23, and 36 (the "Unsupported Conversion Claims"). Petitioner argued these claims, which require encoding a first still picture (e.g., JPEG) from a second, already-encoded still picture (e.g., MPEG), lacked written description support in the ’529 patent. Despite this, Petitioner contended the claims were obvious. It was argued that a POSITA would have known a straightforward, albeit inefficient, method to perform such a conversion: first, decode the MPEG picture to raw image data, and then re-encode that data into the JPEG format. This simplistic technique, while not taught in the patent, was argued to be part of the general knowledge in the art, rendering the claims obvious over the disclosures of Ishikawa or Peters.

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