PTAB

IPR2018-01801

Samsung Electronics Co., Ltd. v. FotoNation Limited

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1. Case Identification

  • Patent #: 8,908,932
  • Filed: September 27, 2018
  • Petitioner(s): Samsung Electronics Co., Ltd.
  • Patent Owner(s): FotoNation Limited
  • Challenged Claims: 7-9, 11-15, 17, and 18

2. Patent Overview

  • Title: Digital Image Processing with Face Detection and Skin Tone Analysis
  • Brief Description: The ’932 patent describes methods for digital image processing, specifically for automatically enhancing a digital image. The system identifies faces within an image, detects the skin tone of those faces, and suggests or applies processing enhancements based on that analysis.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lao-I and Lao-II - Claims 7-9, 11-15, 17, and 18 are obvious over Lao-I in view of Lao-II.

  • Prior Art Relied Upon: Lao-I (Application # 2004/0228528) and Lao-II (Application # 2004/0208114).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lao-I teaches a method of processing a digital image using face detection to determine correction parameters. This includes key steps from independent claim 7, such as detecting a face, inferring attributes like race (skin tone) from color and lightness data, and adjusting parameters for individual faces to correct the image. However, Lao-I discloses these functions in a standalone "image editing apparatus" external to a camera. Lao-II, from the same inventor, discloses an "image acquisition apparatus" (a digital camera) that performs similar face detection and image processing functions internally. Petitioner contended that Lao-I provides the core processing method, while Lao-II teaches implementing such processing within the camera itself, thus satisfying the "image acquisition apparatus" preamble of claim 7.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Lao-I and Lao-II because they are in the same technical field, share a common inventor, and address similar problems. A POSITA would be motivated to integrate the advanced correction methods of Lao-I into the in-camera system of Lao-II to create a more capable, portable device that could perform real-time image enhancements without relying on a separate, external apparatus.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because Lao-II already demonstrates the feasibility of performing complex image processing, including face detection and parameter adjustment, within a digital camera's CPU. Integrating Lao-I’s specific correction algorithms would be a predictable implementation.

Ground 2: Obviousness over Lao-I, Lao-II, and Simon - Claims 8 and 14 are obvious over Lao-I and Lao-II in view of Simon.

  • Prior Art Relied Upon: Lao-I (Application # 2004/0228528), Lao-II (Application # 2004/0208114), and Simon (Patent 7,082,211).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative for claims 8 and 14, which require "selectively applying fill-flash to regions...to open up shadows." Petitioner first argued that the combination of Lao-I and Lao-II inherently teaches this by correcting for backlight, which creates shadows. To the extent the Board finds this teaching insufficient, Petitioner asserted that Simon explicitly remedies any deficiency. Simon discloses a retouching method that identifies "shadows in places where they should not be" and uses a skin tone enhancing filter to adjust the luminance of the skin region, effectively "lightening or darken[ing]" it to open up shadows.
    • Motivation to Combine (for §103 grounds): A POSITA seeking to improve the shadow correction capabilities of the combined Lao-I/Lao-II system would have been motivated to incorporate the teachings of Simon. Simon is in the same field of enhancing portrait-type images and explicitly addresses correcting skin imperfections manifested as shadows, making it a relevant source for improving the base system's handling of backlit or shadowed faces.
    • Expectation of Success (for §103 grounds): A POSITA would expect success in combining Simon's teachings, as it involves applying known luminance adjustment techniques to a specific problem (shadows) already identified as a target for correction in Lao-I (backlight correction).

4. Key Claim Construction Positions

  • "each face image": Petitioner argued that the phrase "adjusting a luminance of each face image separately depending on the skin tone of each face image" in independent claims 7 and 13 lacks a proper antecedent basis. The preceding claim limitations refer to a single "face image." For the purposes of its argument, Petitioner assumed the claim should be interpreted to refer to a scenario where multiple faces are present in an image and the luminance of each is adjusted separately. This interpretation is critical to Petitioner's argument that this feature was new matter not supported by the earliest priority application.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Entitlement: A central contention of the petition was that the '932 patent is not entitled to its claimed priority date of June 26, 2003 (from the '810 application). Petitioner argued that the key limitation of "adjusting a luminance of each face image separately depending on the skin tone of each face image" was not disclosed in the '810 application. Instead, this concept was allegedly introduced for the first time as new matter in a later continuation-in-part (the '539 CIP application) filed on October 30, 2006. Therefore, Petitioner contended the challenged claims have an effective filing date no earlier than October 30, 2006, which makes the Lao-I, Lao-II, and Simon references available as prior art under pre-AIA §102.

6. Arguments Regarding Discretionary Denial

  • Concurrent Petitions: Petitioner disclosed it was concurrently filing another IPR petition against the '932 patent. It argued that the Board should institute both petitions to ensure a "just, speedy and inexpensive resolution." The petitions were presented as non-redundant because the grounds are distinct: this petition relies on intervening prior art (contingent on the Board agreeing with Petitioner's priority date argument), while the other petition presents grounds that do not rely on intervening prior art. This strategy was designed to address the contingency of the patent owner successfully claiming an earlier priority date.

7. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 7-9, 11-15, 17, and 18 of the ’932 patent as unpatentable.