LG Electronics Inc v. ImmerVision Inc

1. Case Identification

• Case #: IPR2020-00195
• Patent #: 6,844,990
• Filed: November 27, 2019
• Petitioner(s): LG Electronics Inc.
• Patent Owner(s): Immervision, Inc.
• Challenged Claims: 21

2. Patent Overview

• Title: Panoramic Objective Lens with Non-Linear and Invertible Image Point Distribution Function
• Brief Description: The ’990 patent describes a panoramic objective lens for capturing digital panoramic images. The lens is designed with a non-linear image point distribution function, which creates at least one expanded zone (for higher resolution) and at least one compressed zone in the captured image, unlike classical lenses with linear distribution.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tada - Claim 21 is obvious over Tada.

• Prior Art Relied Upon: Tada (Patent 5,861,999).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tada, which was never considered during the original prosecution or reexamination of the ’990 patent, discloses a "super wide angle lens system" that meets every limitation of claim 21. Petitioner’s expert declaration presented a detailed analysis of Tada’s third embodiment using Code V optical design software. This analysis allegedly showed that Tada's lens has a non-linear distribution function that, as required by claim 21, compresses the center and edges of the image while expanding an intermediate zone. Regarding the ±10% maximum divergence limitation from parent claim 17, Petitioner’s analysis showed Tada’s lens produces a maximum divergence of up to -9.88%. Petitioner contended this value is "on the order of" or "close enough" to the claimed ±10% to establish a prima facie case of obviousness, particularly as the ’990 patent does not suggest the 10% value is critical.
  • Motivation to Combine (for §103 grounds): As this ground is based on a single reference, the argument was that Tada itself teaches the claimed invention. Alternatively, if the -9.88% divergence was deemed insufficient, a person of ordinary skill in the art (POSA) would have been motivated by the known goal of improving image resolution to modify Tada's lens through routine optimization to increase the divergence to the claimed 10% threshold.
  • Expectation of Success (for §103 grounds): A POSA would have a high expectation of success in making minor modifications to Tada's lens design using standard tools like Code V to achieve a small increase in divergence, as this constitutes routine optimization in the predictable field of lens design.

Ground 2: Obviousness over Tada and Nagaoka - Claim 21 is obvious over Tada in view of Nagaoka.

• Prior Art Relied Upon: Tada (Patent 5,861,999), Nagaoka (Patent 6,128,145).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that to the extent Tada alone was deemed insufficient, the combination with Nagaoka renders claim 21 obvious. Tada was argued to provide the core lens structure with the specific compression/expansion zone profile of claim 21. Nagaoka was introduced to explicitly teach the ±10% maximum divergence limitation from parent claim 17. Petitioner showed that Nagaoka discloses fisheye lenses with non-linear distribution functions having maximum divergences well over 10% (e.g., -14.76% and -24.19%) to improve image resolution.
  • Motivation to Combine (for §103 grounds): A POSA would combine Nagaoka's explicit teaching of using significant divergence (>10%) to increase resolution with Tada's lens design. The motivation would be to apply a known technique from Nagaoka to improve the resolution in Tada's "area of interest"—the expanded intermediate zone—by increasing its divergence to at least ±10%.
  • Expectation of Success (for §103 grounds): A POSA would reasonably expect success because combining the teachings involves applying a known technique (Nagaoka's divergence principle) to a similar system (Tada's wide-angle lens) to achieve a predictable and desired result (enhanced resolution).

Ground 3: Obviousness over Tada and Baker - Claim 21 is obvious over Tada in view of Baker.

• Prior Art Relied Upon: Tada (Patent 5,861,999), Baker (Patent 5,686,957).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative to Ground 2, using Baker as the secondary reference. As in the other grounds, Tada was said to provide the fundamental lens structure of claim 21. Baker was argued to explicitly teach the ±10% maximum divergence limitation by disclosing a peripheral-enhancing lens that achieves a maximum divergence of 15.1% to increase resolution in the periphery of an image.
  • Motivation to Combine (for §103 grounds): A POSA would have been motivated to apply Baker's principle of using a non-linear function with significant divergence to enhance a specific image zone to the lens disclosed in Tada. Even though Baker enhances the periphery and Tada enhances an intermediate zone, the underlying principle of trading resolution between different zones is the same.
  • Expectation of Success (for §103 grounds): There would be a high expectation of success in applying Baker's teachings to Tada's lens, as both patents operate in the same technical field of wide-angle lenses and address the common problem of optimizing image data capture across the field of view.

4. Key Claim Construction Positions

• "panoramic objective lens": Petitioner proposed this term be construed to mean a "super-wide or ultra-wide angle objective lens," such as the 'fish-eye' type lens mentioned as an example in the ’990 patent specification.
• "optical means for projecting...": Petitioner argued this limitation from cancelled parent claim 17 is a means-plus-function term under pre-AIA §112(6). The recited function is projecting a panorama with a non-linear distribution function having specific divergence and zone characteristics. The corresponding structure disclosed in the ’990 patent was identified as "a series of optical elements, e.g., as shown in Figs. 15, 16, and 18, and equivalents thereof."

5. Key Technical Contentions (Beyond Claim Construction)

• The central technical contention underpinning all grounds was Petitioner's expert analysis of the Tada patent using Code V optical design software. Petitioner argued this analysis, based on the specific lens prescription data in Tada's Table 5, proved that Tada's lens inherently performs the functions required by claim 21—namely, compressing the image center and edges while expanding an intermediate zone. This analysis formed the factual basis for the assertion that Tada alone, or at least its core design, anticipated or rendered obvious the challenged claim.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution. The primary reasons given were that the main prior art reference, Tada, was never before considered by the USPTO. While Nagaoka and Baker were cited in a prior reexamination, that proceeding did not involve claim 21, and the new combinations with Tada present new arguments and questions of patentability. Petitioner also contended this was not an improper follow-on petition because a prior IPR on the ’990 patent was filed by an unrelated party (Panasonic), challenged different claims, and was terminated before a preliminary response was filed.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claim 21 of the ’990 patent as unpatentable under 35 U.S.C. §103.