PTAB

IPR2019-00067

ASUSTeK Computer Inc v. Maxell Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Video Reproducing Method and Apparatus
  • Brief Description: The ’229 patent describes an apparatus and method for recording and reproducing moving pictures (e.g., MPEG), still pictures (e.g., JPEG), and their corresponding thumbnail images. The invention focuses on generating and storing thumbnails for both media types to facilitate browsing and selection for playback.

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 the Sony camera manual discloses the core elements of the challenged claims, including a digital camera ("photographing unit") that records MPEG video and JPEG still images, generates corresponding thumbnails, and displays them for selection ("display unit," "reproducing unit"). However, Sony used a proprietary ".411" format for its thumbnails. Cohen was cited to teach encoding thumbnails in the standard JPEG format, and Haseno was cited to teach storing these thumbnail files in a directory separate from the main image and video files. Anderson was presented as disclosing the specific hardware structures (e.g., processors, codecs) corresponding to the claimed "unit" limitations.
    • Motivation to Combine: A POSITA would combine Sony with Cohen to replace the proprietary ".411" thumbnail format with the universally compatible JPEG format, thereby allowing thumbnails to be viewed on standard computers and the World Wide Web. A POSITA would further incorporate Haseno's teaching of storing thumbnails in a dedicated directory to improve the speed and ease of navigating and accessing them, which Petitioner asserted was a routine engineering design choice. Anderson provided known hardware configurations that a POSITA could use to implement the camera's functions, motivated by predictable trade-offs between cost and performance.
    • Expectation of Success: The combination involved applying known, standardized techniques (JPEG encoding, separate file directories) to a conventional digital camera system to achieve predictable improvements in compatibility 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: Petitioner asserted that Anderson serves as a primary reference, disclosing a digital video camera that records both MPEG video and JPEG still pictures, generates representative thumbnails for both media types, and displays them in a grid for user selection and playback. Anderson thus taught the core functionality of the claimed "photographing," "recording," "display," and "reproducing" units. The combination with Cohen was argued to supply the express teaching of encoding video thumbnails using the JPEG method, while the combination with Haseno supplied the teaching of storing all thumbnails in a dedicated directory separate from the main media files.
    • Motivation to Combine: A POSITA would be motivated to modify Anderson's system based on Cohen's proposal to use JPEG for all thumbnails to ensure broad compatibility, a known issue for digital libraries and web access at the time. The motivation to incorporate Haseno's file structure was to improve user experience by making thumbnail browsing faster and more efficient than navigating through directories containing large media files. This was presented as a common-sense solution to a known problem in the art.
    • Expectation of Success: Combining these references involved integrating well-understood file formats and directory structures into a digital camera system. A POSITA would have reasonably expected success in achieving improved compatibility and navigation speed without undue experimentation.

4. Key Claim Construction Positions

  • Petitioner argued that the terms "a photographing unit," "a recording unit," "a thumbnail generating unit," and "a reproducing unit" should be construed as means-plus-function limitations under 35 U.S.C. §112, ¶6 (pre-AIA).
  • The petition emphasized that these "unit" terms are generic placeholders that do not recite sufficiently definite structure and merely describe a function. Petitioner noted that during prosecution, the Applicant agreed with the Examiner's conclusion that these terms were drafted in means-plus-function format. This construction was central to the invalidity arguments, as it limits the scope of the claims to the specific structures disclosed in the ’229 patent's specification (and their equivalents), which Petitioner contended were all present in the prior art.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of Patent 9,451,229 as unpatentable.