PTAB

IPR2018-01733

Samsung Electronics Co Ltd v. Visual Effect Innovations LLC

Key Events

Petition

petition

Case #: IPR2018-01733
Patent #: 9,699,444
Filed: September 14, 2018
Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
Patent Owner(s): Visual Effect Innovations, LLC
Challenged Claims: 1, 26, 27

Title: Faster State Transitioning for Continuous Adjustable 3Deeps Filter Spectacles Using Multi-Layered Variable Tint Materials
Brief Description: The ’444 patent discloses an apparatus for processing video by presenting two substantially similar image frames alternated with a third, dissimilar "bridge frame." This technique is alleged to create an effect of continuous movement, which the patent refers to as "Eternalism."

Prior Art Relied Upon: Nakamura (Patent 6,744,440).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Nakamura, which discloses an image-processing apparatus for video game systems, teaches every element of claim 1. Nakamura’s “enlarging means 110” was asserted to meet the limitation of expanding a first image frame to generate a modified image frame. Its “gray pattern image processing means” generates a non-solid color bridge frame, and its “combining means 212” blends the modified image with the bridge frame. Finally, Nakamura’s apparatus outputs the resulting blended image to a display monitor, satisfying the display limitation.

Prior Art Relied Upon: Johnson (Patent 8,576,336), MacInnis (Patent 6,853,385), and Hirano (Patent 6,144,412).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Johnson discloses a video formatter that inserts a black frame (a solid-color "bridge frame" as required by claim 26) into a video sequence to simulate a cinematic flicker effect and reduce motion blur. Johnson, however, did not expressly disclose expanding or otherwise modifying the image frames. MacInnis and Hirano were introduced to supply this missing element, as both teach video scalers that can upscale (expand) or downscale video signals to match display resolutions.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Johnson's frame-insertion technique with the well-known scaling technology of MacInnis or Hirano to comply with the ATSC Digital Television Standard. Since Johnson’s device was intended for use with televisions, a POSITA would have recognized the market demand and technical necessity of incorporating scaling to handle various video resolutions for high-definition television content.
- Expectation of Success: A POSITA would have a reasonable expectation of success because video scaling was a common and predictable technique used in the art to adapt video signals for different display requirements.

Prior Art Relied Upon: Takahara (Patent 6,628,355), MacInnis (Patent 6,853,385), and Hirano (Patent 6,144,412).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Takahara teaches an LCD panel that improves dynamic image response by displaying a black screen (a solid-color bridge frame for claim 26) or a natural image with reduced brightness (a non-solid color bridge frame for claim 1) between display periods of a first and second image. Similar to the Johnson combination, Takahara did not explicitly teach expanding the image frames. MacInnis and Hirano were again relied upon for their disclosure of video scalers capable of expanding image frames.
- Motivation to Combine: The motivation was analogous to Ground 2. Takahara’s display apparatus would need to comply with the ATSC standard to display high-definition content. Therefore, a POSITA would have been motivated to integrate the known scaling solutions from MacInnis or Hirano into Takahara's system to meet this requirement.
- Expectation of Success: Combining these known elements for their intended purposes would have been straightforward and predictable for a POSITA in the field of video display technology.
Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 26 and 27 based on Okamura in view of either MacInnis or Hirano, relying on a similar motivation to combine to meet ATSC standards.

Petitioner argued that several claim terms formatted as "a [component] adapted to [function]" (e.g., "a processor adapted to expand the first image frame") should be construed as means-plus-function limitations under §112(f).
For each of these terms, Petitioner identified corresponding structures in the ’444 patent’s specification, such as a general-purpose computer running specific graphics software (e.g., Adobe Photoshop, After Effects). Petitioner asserted that even under this more specific means-plus-function construction, the prior art still disclosed the claimed functions and their corresponding structures.

Disputed Priority Date: A central contention of the petition was that the challenged claims were not entitled to their asserted 2001 priority date. Petitioner argued that the key limitation of "expanding an entire image frame" lacked written description support in the priority chain until an application filed on August 4, 2014. Prior applications only disclosed manipulating elements or areas within a picture, not expanding the entire frame.
Prior Art Applicability: By establishing a 2014 priority date, Petitioner argued that references like Johnson (filed in 2009) qualify as prior art to the challenged claims, which would not be the case under the Patent Owner's asserted 2001 priority date.

Petitioner requested the institution of an inter partes review and cancellation of claims 1, 26, and 27 of the ’444 patent as unpatentable.