BlackBerry Corp 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, 10-12

2. Patent Overview

• Title: Reproducing Apparatus and Method
• Brief Description: The ’897 patent discloses a reproducing apparatus that digitally records and plays back moving and still images, along with corresponding thumbnail images. A purported novelty is the ability to record thumbnails for both moving and still pictures using a common encoding method to facilitate browsing.

3. Grounds for Unpatentability

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

• 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 video reproducing apparatus that captures and reproduces both moving pictures (encoded with MPEG) and still pictures (encoded with JPEG), along with corresponding "index images" (thumbnails). Takaichi’s system displays these thumbnails to allow a user to select and view the full-resolution detailed image. Petitioner contended Takaichi teaches encoding all thumbnails using a common method (JPEG). However, Takaichi’s method for creating thumbnails by "subsampling" did not explicitly guarantee a "smaller number of pixels" as required by the claims. Kuchta was introduced to supply this teaching, as it explicitly describes generating a "reduced resolution, or 'thumbnail', image" from an original image using an averaging technique, which inherently results in a reduced number of pixels.
  • Motivation to Combine: A POSITA would combine Kuchta’s averaging technique for thumbnail generation with Takaichi’s system as a known and simple alternative to Takaichi’s subsampling method. Kuchta explained that generating smaller thumbnails is desirable to enable quick review of images and minimize file size while providing a recognizable representation of the original. This provided a clear reason to apply Kuchta's more explicit pixel-reduction method to Takaichi’s general framework for thumbnail-based navigation.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining known thumbnail generation techniques (Kuchta) with a known image browsing system (Takaichi) was a straightforward application of conventional technologies to achieve a predictable result.

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

• 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 Anderson’s digital video camera (DVC) discloses the core video reproducing apparatus. Anderson’s DVC captures, processes, and displays still JPEG images and moving MPEG video clips, and it features a review mode that displays thumbnails for both media types. Petitioner argued Anderson implies these thumbnails are low-resolution versions stored on a recording medium. To the extent Anderson is not explicit, Takaichi was cited for its clear teaching of encoding thumbnails for both moving and still images with a common second encoding method (JPEG) and storing them on the recording medium. Kuchta was again cited to explicitly teach generating thumbnails with a "smaller number of pixels" via averaging, a feature Petitioner argued was only implicit in Anderson’s "small, low-resolution" thumbnails.
  • Motivation to Combine: A POSITA would combine the references to improve the functionality of Anderson's DVC. It would have been obvious to explicitly store Anderson's thumbnails with their corresponding media files as taught by Takaichi and Kuchta to enable "fast browsing of the camera contents." Furthermore, a POSITA would have been motivated to adopt Takaichi's use of a single encoding method (JPEG) for all thumbnails in Anderson’s device to reduce hardware complexity, cost, and conserve disk space, which were well-known design goals.
  • Expectation of Success: Success was expected because the combination involved applying known, compatible techniques for thumbnail generation, storage, and encoding from Takaichi and Kuchta to the established DVC framework of Anderson to achieve the predictable benefits of faster browsing and reduced system complexity.

4. Key Claim Construction Positions

• "output unit" (Claim 4): Petitioner argued this term is subject to 35 U.S.C. §112(6)/(f) analysis.

  • Function: "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."
  • Structure: Petitioner identified the corresponding structure in the ’897 patent’s specification as the "video processing unit 124" together with the "video output terminal 125."

• "reproducer" (Claim 4): Petitioner argued this term is also subject to §112(6)/(f) analysis as it lacks a sufficiently definite structural meaning to a POSITA.

  • Function: "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..."
  • Structure: Petitioner identified the corresponding structure as the "system control unit," "reproducing control unit 118," "moving picture expanding unit 120," and "thumb nail picture expanding unit 122," implemented with processors known at the time.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 4-6 and 10-12 of the ’897 patent as unpatentable.