BlackBerry Corporation v. Maxell, Ltd.

1. Case Identification

• Case #: IPR2019-00095
• Patent #: 7,995,897
• Filed: October 16, 2018
• Petitioner(s): BlackBerry Corporation
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 4-6 and 10-12

2. Patent Overview

• Title: Video Reproducing Apparatus, Video Recording and Reproducing Apparatus, Video Reproducing Method, and Video Recording and Reproducing Method
• Brief Description: The ’897 patent discloses a reproducing apparatus for digitally recording and reproducing both moving and still images. The purported novelty is the ability to capture and record thumbnail images corresponding to both the moving and still pictures using a common encoding method, thereby simplifying browsing and playback.

3. Grounds for Unpatentability

Ground 1: Claims 4-6 and 10-12 are obvious over Takaichi in view of Kuchta.

• Prior Art Relied Upon: Takaichi (Japanese Laid Open Patent Application No. 10-164483) and Kuchta (Patent 5,164,831).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Takaichi discloses a system for capturing and reproducing moving pictures (encoded with MPEG) and still pictures (encoded with JPEG) along with corresponding thumbnails ("index image data"). Takaichi teaches generating these thumbnails via "subsampling" and encoding them with JPEG. To the extent Takaichi’s teaching of "subsampling" is not explicit enough to meet the limitation of thumbnails having a "smaller number of pixels," Petitioner asserted that Kuchta remedies this. Kuchta explicitly teaches generating a "reduced resolution, or 'thumbnail', image" from an original image using an averaging technique, which inherently results in an image with a reduced number of pixels.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have understood that Takaichi’s simple subsampling was one of several known methods for creating thumbnails. Petitioner contended that a POSITA would have found it obvious to use the averaging technique taught by Kuchta as a known, alternative method for reducing pixel count in Takaichi’s system to create a recognizable thumbnail for efficient multimedia navigation.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in applying Kuchta's well-understood averaging technique to Takaichi's system, as it was a simple substitution of one known pixel-reduction method for another to achieve the predictable result of a smaller thumbnail image.

Ground 2: Claims 4-6 and 10-12 are obvious over Anderson in view of Takaichi and Kuchta.

• Prior Art Relied Upon: Anderson (Patent 6,683,649), Takaichi (Japanese Laid Open Patent Application No. 10-164483), and Kuchta (Patent 5,164,831).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Anderson is the primary reference, disclosing a digital video camera (DVC) that captures, processes, and displays both still JPEG images and MPEG video clips. Anderson's DVC includes a review mode that displays thumbnails for both media types to facilitate browsing. Petitioner argued that Anderson teaches most limitations of independent claim 4. Takaichi was introduced to supplement Anderson's disclosure for the limitation requiring that thumbnails for both moving and still pictures are encoded by the same method (the "second encoding method," i.e., JPEG). While Anderson teaches different primary encoding methods (MPEG for video, JPEG for stills), Takaichi explicitly teaches encoding all "index image data" (thumbnails) with JPEG, regardless of the primary image type. Kuchta was cited for the same reason as in Ground 1: to explicitly teach generating thumbnails with a smaller number of pixels via averaging, if Anderson’s disclosure of a "small, low-resolution version" was deemed insufficient.
  • Motivation to Combine: A POSITA would combine Anderson's DVC with Takaichi's common thumbnail encoding scheme (JPEG for all thumbnails) for the known benefits of reducing device complexity and cost by using the same encoding hardware/platform for all thumbnail generation. This would have been a predictable design choice. Similarly, it would have been obvious to apply Kuchta's averaging technique to Anderson's system to ensure thumbnails were efficiently sized for quick review, a known problem with a known solution.
  • Expectation of Success: Combining these known elements—a DVC from Anderson with a common thumbnail encoding strategy from Takaichi and a pixel-reduction technique from Kuchta—was presented as a straightforward integration of existing technologies with a high expectation of success.

4. Key Claim Construction Positions

• "output unit" (Claim 4): Petitioner argued this term is a means-plus-function term under pre-AIA §112, para. 6.
  • The recited function is: "output[ing] a plurality of reproduced ones among the first pictures, and then output[ing] a reproduced moving picture corresponding to a selected first picture, and ... output[ing] a plurality of reproduced ones among the second pictures, and then output[ing] a reproduced still picture corresponding to a selected second picture."
  • Petitioner identified the corresponding structure in the ’897 patent’s specification as the "video processing unit 124" in combination with the "video output terminal 125."
• "reproducer" (Claim 4): Petitioner also argued this term should be construed under §112, para. 6.
  • The recited function is: "reproduces moving pictures encoded by a first encoding method, first pictures corresponding to the moving pictures and having a smaller number of pixels..., first still pictures..., second still pictures..., and second pictures..."
  • Petitioner identified the corresponding structure as the "system control unit 128," "reproducing control unit 118," "moving picture expanding unit 120," and "thumb nail picture expanding unit 122," as implemented by processors known at the time.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 4-6 and 10-12 of the ’897 patent as unpatentable.