PTAB

IPR2019-00067

Asustek Computer Inc v. Maxell, Ltd.

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1. Case Identification

2. Patent Overview

  • Title: Video Reproducing Method and Apparatus
  • Brief Description: The ’229 patent relates to an apparatus for recording and reproducing moving pictures (e.g., MPEG) and still pictures (e.g., JPEG), as well as corresponding thumbnail pictures. The apparatus comprises various functional units for photographing, recording, generating thumbnails, displaying, and reproducing the media content.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 are obvious over Sony in view of Cohen, Haseno, and Anderson.

  • Prior Art Relied Upon: Sony (Sony MVC-FD81 Digital Still Camera Operating Instructions, 1998), Cohen (a 1997 journal article on image thumbnails), Haseno (Patent 6,728,476), and Anderson (Patent 6,683,649).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sony discloses the primary components of the claimed invention, including a digital camera capable of recording MPEG moving pictures and JPEG still pictures, along with corresponding thumbnails. However, Sony’s thumbnails were created in a proprietary ".411" format, not the universally accessible JPEG format. Petitioner asserted that Cohen, which proposed a "thumb-oriented version of JPEG," supplies the missing teaching of encoding thumbnails in the JPEG format. Furthermore, Petitioner contended that Haseno teaches the final key element: storing thumbnail files in a directory separate from the main picture files to enable faster and more efficient retrieval.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Sony with Cohen to improve the accessibility and utility of thumbnails, as JPEG is a standard format viewable on any computer, unlike Sony's proprietary format. A POSITA would further incorporate Haseno’s teaching to improve user experience by organizing thumbnails in a dedicated directory, which makes navigation faster and less cumbersome than searching through directories containing the full-size image files. Anderson was cited as further evidence that the hardware components to implement these functions (e.g., codecs, processors) were well-known and available.
    • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success, as the proposed combination involves applying known, standard techniques (JPEG encoding, dedicated file directories) to a conventional digital camera (Sony) to achieve predictable improvements in accessibility and performance.

Ground 2: Claims 1-12 are obvious over Anderson in view of Cohen and Haseno.

  • Prior Art Relied Upon: Anderson (Patent 6,683,649), Cohen (a 1997 journal article on image thumbnails), and Haseno (Patent 6,728,476).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative combination starting with Anderson as the primary reference. Petitioner argued that Anderson discloses a digital video camera (DVC) that records both MPEG video and JPEG still pictures, displays a list of thumbnail images for selection, and contains the necessary hardware (e.g., video codec, CPU, memory). While Anderson discloses thumbnails, it does not explicitly teach encoding thumbnails for moving pictures in the JPEG format or storing all thumbnails in a separate directory from the primary media files. As in Ground 1, Petitioner argued Cohen supplies the teaching to use JPEG for all thumbnails, and Haseno teaches storing them in a dedicated directory.
    • Motivation to Combine: The motivation was framed identically to Ground 1. A POSITA would modify the DVC of Anderson using the teachings of Cohen and Haseno to gain the predictable benefits of improved thumbnail accessibility (via JPEG standard) and faster, more organized retrieval (via a separate directory). This combination was presented as a straightforward application of known solutions to improve a known device.
    • Expectation of Success: Success was expected because the combination merely integrated well-understood, complementary technologies to enhance the functionality of a standard digital camera system as disclosed in Anderson.

4. Key Claim Construction Positions

  • Petitioner contended that the key claim terms "photographing unit," "recording unit," "thumbnail generating unit," and "reproducing unit" are means-plus-function limitations governed by 35 U.S.C. §112, ¶6 (pre-AIA).
  • Petitioner argued that these "unit" terms are nonce words that fail to recite sufficiently definite structure for performing their recited functions.
  • A central component of this argument was prosecution history estoppel. Petitioner asserted that during prosecution, the Applicant explicitly agreed with the Examiner's conclusion that these terms were means-plus-function limitations in order to overcome rejections and secure the patent's allowance. Therefore, the Patent Owner should be estopped from arguing a different, broader construction.
  • Based on this construction, Petitioner argued that the prior art combinations disclose the corresponding structures identified in the ’229 patent's specification for performing the claimed functions.

5. Relief Requested

  • Petitioner requested the Board institute an inter partes review of claims 1-12 of Patent 9,451,229 and cancel the claims as unpatentable.