PTAB

IPR2019-00656

Huawei Technologies Co., Ltd. v. Maxell Ltd.

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1. Case Identification

  • Case #: IPR2019-00069
  • Patent #: 9,544,517
  • Filed: February 6, 2019
  • Petitioner(s): Huawei Technologies Co., Ltd.; Huawei Device USA, Inc.; Huawei Investment & Holding Co., Ltd.; Huawei Device (Shenzhen) Co., Ltd.; Huawei Device Co., Ltd.; Huawei Tech. Investment Co., Ltd.; and Huawei Device (Hong Kong) Co., Ltd.
  • Patent Owner(s): Maxell Ltd.
  • Challenged Claims: 8-11

2. Patent Overview

  • Title: ELECTRIC CAMERA
  • Brief Description: The ’517 patent discloses an image sensing method for an electric camera that uses a solid-state image sensing device with a high number of pixels. The technology purports to enable the capture of highly detailed still images and moving video by driving the image sensor to vertically mix or cull pixel signals, which reduces the output data to match display standards (e.g., NTSC) and allows for a continuously changing magnification factor without requiring additional field memory circuitry.

3. Grounds for Unpatentability

Ground 1: Claims 8, 9, and 11 are obvious over Yoshida in view of Lyon and Tanizoe.

  • Prior Art Relied Upon: Yoshida (Patent 6,970,637), Lyon (Patent 6,512,858), and Tanizoe (Application # 2003/0011699).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Yoshida taught the core of independent claim 8: an electric camera with a high-resolution image sensor (N vertical pixels, e.g., 960) that outputs a lower-resolution signal (M effective scanning lines, e.g., 240) for a television system, satisfying the limitation that N is at least three times M. Petitioner asserted that Lyon taught the claimed method of driving the sensor in different states by vertically culling or skipping pixel rows at different intervals (K1, K2) to implement different zoom levels (e.g., a low-magnification full-frame view versus a higher-magnification partial-frame view). Finally, Tanizoe was cited for the conventional feature of displaying the camera's output image on an external television screen.
    • Motivation to Combine: A POSITA would combine Lyon’s row-skipping method with Yoshida’s camera to achieve the known benefits of increased scanning speed and a predictable way to implement zoom functionality. A POSITA would also incorporate Tanizoe's teaching of an external display output to provide the simple, known advantage of viewing images on a larger screen.
    • Expectation of Success: The combination involved applying known techniques (selective pixel culling for zoom, external display output) to a known type of system (a digital camera) to achieve predictable results.

Ground 2: Claim 10 is obvious over Yoshida, Lyon, Tanizoe, and Parulski.

  • Prior Art Relied Upon: Yoshida (Patent 6,970,637), Lyon (Patent 6,512,858), Tanizoe (Application # 2003/0011699), and Parulski (Patent 5,440,343).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1. Petitioner argued that Parulski supplied the missing limitation of claim 10: an electric camera having both a "moving video mode" and a "static image mode." The combination of Yoshida, Lyon, and Tanizoe already described the zooming function (switching from a first state to a second state); Parulski taught that such a function would be implemented within a camera's moving video mode.
    • Motivation to Combine: A POSITA would have been motivated to add the dual-mode (video and still) capability taught by Parulski to the camera described in Ground 1. This was a common, conventional feature in digital cameras at the time, and its inclusion would have been a predictable improvement to provide greater functionality.
    • Expectation of Success: Integrating a standard motion/still mode feature into the camera design would have been straightforward for a POSITA with a reasonable expectation of success.

Ground 3: Claims 8-11 are obvious over Ochi and Endsley.

  • Prior Art Relied Upon: Ochi (Patent 6,002,429) and Endsley (Patent 6,005,613).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ochi served as the primary reference, disclosing an electronic camera with a high-resolution line sensor (N=2000 pixels) that outputs to a lower-resolution TV monitor (M=500 lines), thus meeting the N ≥ 3M requirement. Ochi also taught signal "thinning" (mixing/culling) to match output resolution and included a "zoom switch." Petitioner asserted that Endsley taught a more specific implementation of the claimed features by disclosing a digital camera that uses stored configuration parameters (including subsampling factors and crop values) to control the image sensor. This allowed the camera to switch between different modes, such as a full, non-cropped view (first state) and a "zoomed in" cropped or subsampled view (second state).
    • Motivation to Combine: A POSITA would combine Endsley's technique of using stored configurations for different zoom modes with Ochi’s camera to create a more robust and efficient digital zoom. This combination would allow for immediately accessible zoom levels selectable via Ochi's zoom switch, representing the application of a known technique to an existing system to achieve the predictable benefit of improved performance.
    • Expectation of Success: Implementing a known digital zoom strategy using stored parameters into a camera that already possessed basic zoom capabilities would have been a predictable modification for a POSITA.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) would be inappropriate. The core argument was that this was the first IPR filed by Huawei against the ’517 patent and was therefore not a "follow-on" petition subject to the General Plastic factors. Petitioner contended that even if those factors were considered, they would weigh against denial because the petition presented new combinations of prior art never before considered by the USPTO or in any other proceeding. Furthermore, Petitioner asserted that the existence of multiple petitions against the patent was a direct result of the Patent Owner's own widespread litigation activity, and that the public interest favors a review on the merits.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 8-11 of Patent 9,544,517 as unpatentable.