PTAB

IPR2018-01434

Fandango Media LLC v. Maxell Ltd

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Video Access Method and Video Access Apparatus
  • Brief Description: The ’810 patent describes a system for displaying a list of time-serial representative images (i.e., thumbnails) from a video and enabling a user to scroll through that list using common computer input and display components.

3. Grounds for Unpatentability

Ground 1: Obviousness over Steele - Claims 1 and 6 are obvious over Steele.

  • Prior Art Relied Upon: Steele (Patent 5,884,056).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Steele, which teaches a system for browsing video over a network, discloses every element of the challenged claims. Steele describes a graphical user interface (GUI) with a "storyboard" of time-ordered thumbnail images (the claimed "list of time-serial representative images"). The system inherently uses a display screen and a mouse for command input (the claimed "means for displaying" and "means for inputting"). For scrolling, Steele discloses both a draggable slider bar and control buttons, which cause representations of video key frames to "appear and disappear" as the user navigates, meeting the "means for scrolling" limitation. Dependent claim 6, which requires the command to be effectuated by the time duration of continuous actuation, was allegedly met by Steele's disclosure of dragging a slider marker with a mouse button held down or pressing a scroll button.
    • Motivation to Combine (for §103 grounds): While asserted as a complete anticipation, Petitioner argued in the alternative that any minor difference would have been an obvious modification. For example, implementing Steele's GUI with well-known scrolling features from common operating systems like Windows was a simple design choice to provide a familiar user experience.
    • Expectation of Success: A person of ordinary skill in the art (POSITA) would expect predictable results from implementing a video browsing interface using standard, well-understood GUI components like scrollbars and mice, which were commonplace at the time.

Ground 2: Obviousness over Piech - Claims 1 and 6 are obvious over Piech.

  • Prior Art Relied Upon: Piech (Patent 5,442,744).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Piech, which discloses a multimedia display and editing system, also teaches all claimed features. Piech's system presents a "Story Board" and a "Strip Viewer" that both display time-serial representative images of video scenes. The system uses a display and a cursor control device (e.g., a mouse) for command input. Critically, Piech teaches a "familiar scroll bar" that a user can drag to navigate through the thumbnail images. When the number of images exceeds what can be displayed, scrolling replaces older images with new ones. Petitioner asserted that dragging this scroll bar with a mouse, an inherent function, satisfies the "continuous actuation" requirement of claim 6.
    • Motivation to Combine (for §103 grounds): As with Steele, Petitioner argued that to the extent Piech does not explicitly disclose every detail, modifying its interface with conventional GUI elements would have been an obvious design choice. For instance, ensuring the scrollbar operated in a standard, continuous-drag manner was a basic implementation detail.
    • Expectation of Success: A POSITA would have a high expectation of success in implementing Piech's described multimedia editor using conventional scrolling mechanisms, as these were standard tools for navigating content that exceeded screen space.

Ground 3: Obviousness over Steele in view of Piech - Claims 1 and 6 are obvious over Steele in view of Piech.

  • Prior Art Relied Upon: Steele (Patent 5,884,056) and Piech (Patent 5,442,744).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground combined the teachings of the primary references. Steele provided the foundational video browsing system with a storyboard of thumbnails and scrolling controls. Piech was used to supplement Steele's teaching, particularly by showing the simultaneous display of a video index and a video playback window (Piech’s “Player 11”).
    • Motivation to Combine (for §103 grounds): A POSITA would combine Piech's simultaneous playback/index view with Steele's browsing system to improve the user experience. This would further Steele's stated goal of allowing a user to "easily browse" and "quickly zero in on a desired portion of the video data object" by providing the thumbnail index as a visual reference during video playback, a feature taught by Piech.
    • Expectation of Success: Combining two known video interface techniques from the same field—video browsing and video editing—to enhance usability was a predictable and straightforward task for a POSITA. The result would simply be a more integrated and user-friendly video navigation tool.

  • Additional Grounds: Petitioner asserted additional obviousness challenges over Steele in view of Wactlar (a Feb. 1999 article on digital video libraries) and over the combination of Steele, Piech, and Wactlar. These grounds relied on similar rationales, using Wactlar to further demonstrate the common knowledge of displaying filmstrips of key frames with traditional scrollbars alongside a video player.

4. Key Claim Construction Positions

  • The petition argued that since the challenged claims recite "means for..." limitations without corresponding structure, they should be construed under 35 U.S.C. §112, ¶ 6 (pre-AIA). A key dispute centered on the "means for scrolling" limitation.
  • Term: "means for scrolling the list..."
  • Petitioner's Proposed Structure: Petitioner proposed that the corresponding structure is "a general purpose computer programmed with a scrolling function." This construction includes not just the physical components but also the underlying algorithm or software that performs the scrolling.
  • Importance: This construction was central to the invalidity case. By defining the structure as a computer programmed with a function, Petitioner could then argue that this "scrolling function" was a well-known, conventional algorithm widely disclosed in the prior art (including Steele and Piech), making the claimed invention obvious. This contrasts with a potentially narrower construction focused only on a specific input device.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1 and 6 of Patent 7,515,810 as unpatentable under 35 U.S.C. §103.