Sony Corp v. Visual Effect Innovations LLC

1. Case Identification

• Case #: IPR2018-01628
• Patent #: 9,699,444
• Filed: September 6, 2018
• Petitioner(s): Sony Corporation
• Patent Owner(s): Visual Effect Innovations, LLC
• Challenged Claims: 26 and 27

2. Patent Overview

• Title: Faster State Transitioning for Continuous Adjustable 3Deeps Filter Spectacles Using Multi-Layered Variable Tint Materials
• Brief Description: The ’444 patent is directed to an apparatus for video processing. The challenged claims describe an apparatus with storage and a processor adapted to obtain a video frame, generate a modified version of that frame, generate a solid color "bridge frame," and display both the modified frame and the bridge frame.

3. Grounds for Unpatentability

Ground 1: Anticipation over Bolante - Claims 26 and 27 are unpatentable under 35 U.S.C. §102(b) as anticipated by Bolante.

• Prior Art Relied Upon: Bolante (“Premiere 5.1 for Macintosh & Windows: Visual Quickstart Guide,” a printed publication from 1999).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bolante, a user guide for Adobe Premiere video editing software, discloses every limitation of claims 26 and 27. The guide describes running the software on a desktop computer (the "apparatus") with a hard disk and RAM ("storage") and a processor. Petitioner asserted the software, run by the processor, is adapted to: obtain video frames from various sources; generate a modified frame by performing functions like scaling, resizing, removing portions ("garbage matte"), or stitching frames together; and generate a solid color "bridge frame" through features like the "Title Window" which creates an opaque, black background, or by creating a black image during a transition between clips. Bolante also teaches displaying the resulting video, which would include the modified frames and bridge frames. For claim 27, the black background/transition image disclosed in Bolante meets the limitation that the bridge frame is black.

Ground 2: Anticipation over Miura - Claims 26 and 27 are unpatentable under 35 U.S.C. §102(e) as anticipated by Miura.

• Prior Art Relied Upon: Miura (Patent 6,693,619).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended Miura’s liquid crystal display (LCD) system anticipates the claims. Miura’s system includes a video signal output device (e.g., a PC or optical disk drive) which serves as the "storage," and a display apparatus with display control circuitry and a vertical synchronization signal processing unit, which collectively function as the claimed "processor." Petitioner argued Miura’s processor obtains video frames from the output device. It modifies the first image frame via a "resolution converter," which inherently expands (upscales) or shrinks (downscales) the image. Miura generates a solid color bridge frame by turning off the display’s backlight between image frames to improve picture quality, creating a black screen. The system then displays the modified (scaled) image frame and the black bridge (transition) frame. The black frame created by turning off the backlight satisfies the limitation of claim 27.

Ground 3: Obviousness over Miura and MacInnis - Claims 26 and 27 are obvious over Miura in view of MacInnis.

• Prior Art Relied Upon: Miura (Patent 6,693,619) and MacInnis (Patent 6,853,385).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that to the extent Miura’s video signal output device (e.g., PC, VCR) is not considered a "storage" or its control circuitry is not a "processor," it would have been obvious to combine Miura with MacInnis. MacInnis explicitly discloses a video display system with a "unified memory" (SDRAM) for storing video images and a central processing unit (CPU) for video processing, including upscaling and downscaling images.
  • Motivation to Combine: A POSITA would combine Miura and MacInnis because they are analogous art directed to video processing and display systems. A POSITA would be motivated to incorporate MacInnis's more advanced unified memory and CPU into Miura’s display system to improve performance and integrate functionalities, which was a predictable design choice at the time.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in replacing Miura’s separate storage/processing components with MacInnis’s integrated CPU and unified memory, as this involved applying known processing techniques to a known display system to achieve the predictable result of improved video processing.

• Additional Grounds: Petitioner asserted additional challenges, including that claims 26-27 are anticipated by Premiere 5.0 Guide (Ground 2), and are obvious over Okamura in view of MacInnis (Ground 5) and over Takagi in view of Wei (Ground 6). These grounds relied on similar art and arguments regarding the functionality of video editing software and display processors.

4. Key Claim Construction Positions

• "expanding the first image frame": Petitioner argued this term should be construed as "computer graphics cut-and-paste techniques to enlarge the image frame, or increase the resolution of an image frame, such as by upscaling or up-conversion." This construction was based on the patent’s specification and the Patent Owner's infringement contentions in district court litigation, where it equated "expanding" with "upscaling" resolution.
• "bridge frame": Petitioner proposed construing this term as "[1] a solid black or other solid-colored picture, [2] a strongly contrasting image-picture readily distinguished from the two or more pictures, or [3] a timed unlit-screen pause." This construction was based on the specification’s definition of a "bridging interval" and the Patent Owner's litigation assertions that a "bridge frame" is met by "black frame insertion" (BFI), which occurs when a monitor’s backlight is turned off.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner dedicated a substantial portion of the petition to arguing that claims 26 and 27 are not entitled to the claimed 2001 priority date of the original provisional application. Petitioner contended that the provisional application only made generic references to a "computer" and failed to disclose a "processor adapted to" perform the specific functions recited in claim 26. This specific language and supporting disclosure were allegedly not added until a continuation application filed on September 10, 2015. Therefore, Petitioner argued the claims' effective priority date is no earlier than September 10, 2015, making certain references (like Takagi and Wei) available as prior art.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 26 and 27 of the ’444 patent as unpatentable.