Samsung Electronics America Inc v. Yu

1. Case Identification

• Case #: IPR2020-00492
• Patent #: 6,611,289
• Filed: February 4, 2020
• Petitioner(s): Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
• Patent Owner(s): Yu et al.
• Challenged Claims: 1-5

2. Patent Overview

• Title: Digital Cameras Using Multiple Sensors with Multiple Lenses
• Brief Description: The ’289 patent describes a digital camera that uses multiple image sensors, each with its own lens, to produce high-quality images. The system typically uses three sensors responsive to primary colors (e.g., red, green, blue) and a fourth sensor responsive to the full visible spectrum (black-and-white) to capture intensity and detail information.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Yamazaki - Claims 1-2 are anticipated under 35 U.S.C. §102 and/or obvious under 35 U.S.C. §103 over Yamazaki.

• Prior Art Relied Upon: Yamazaki (Patent 5,694,165).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yamazaki, which discloses a "high definition image taking apparatus having plural image sensors," teaches all limitations of claims 1 and 2. Specifically, Yamazaki’s Embodiment 1 describes a digital camera with two image sensors (31A, 31B) closely positioned on a common plane, each with its own lens (3A, 3B). Petitioner contended that since these sensors are provided without color filters, they are inherently sensitive to the full visible color spectrum, thus meeting the limitations of both a first and second sensor being sensitive to the full spectrum as required by claims 1 and 2. The system also includes analog-to-digital converting circuitry, memory, and a digital image processor that combines signals to produce a high-resolution image.
  • Motivation to Combine (for §103 ground): For the alternative obviousness ground, Petitioner asserted that to the extent any single embodiment in Yamazaki did not disclose all limitations, a person of ordinary skill in the art (POSITA) would have found it obvious to combine features from Yamazaki's different disclosed embodiments to arrive at the claimed invention.

Ground 2: Obviousness over Yamazaki and Mansoorian - Claim 4 is obvious over Yamazaki in view of Mansoorian.

• Prior Art Relied Upon: Yamazaki (Patent 5,694,165) and Mansoorian (Patent 6,400,824).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 4 depends on claim 1 and adds the limitation that the analog-to-digital (A/D) converting circuitry comprises two individual A/D converters, each integrated with one of the image sensors for independent and parallel digitization. Petitioner argued Yamazaki teaches two separate processing paths with individual A/D converters (52A, 52B) that operate in parallel. To the extent Yamazaki does not explicitly teach integrating each converter on the same chip as its corresponding sensor, Mansoorian discloses an imaging device that integrates a photosensing array and an A/D converter on a single substrate.
  • Motivation to Combine: A POSITA would combine Yamazaki with Mansoorian to achieve the predictable benefits taught by Mansoorian, such as reduced size, power consumption, and manufacturing cost, along with improved system reliability and noise resistance. The integration of an A/D converter onto the same chip as the image sensor was a known technique for improving camera performance.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination because both references relate to digital imaging sensors and their associated processing circuitry, and integrating known electronic components was a common practice in the art.

Ground 3: Obviousness over Weldy, Denyer, and Nagumo - Claims 1 and 3 are obvious over Weldy in view of Denyer and Nagumo.

• Prior Art Relied Upon: Weldy (EP Application # 0858208A1), Denyer (WO 93/11631), and Nagumo (Patent 4,506,294).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted Weldy discloses a digital camera with multiple lenses and sensors, including a high-resolution monochrome sensor (sensitive to the full visible spectrum) and lower-resolution color sensors (sensitive to selected ranges). This meets the core structure of claim 1. Claim 3 adds limitations where one lens/sensor is configured for a selected color range and the other for the full spectrum. Petitioner argued Weldy’s monochrome sensor corresponds to the second image sensor of claim 1, and one of its color sensors corresponds to the first image sensor. While Weldy does not explicitly require sensors to be on a common plane, Denyer teaches this arrangement to reduce alignment problems and improve image quality. Nagumo provides the teaching of individual A/D converters for each sensor to allow for parallel and more efficient digitization.
  • Motivation to Combine: A POSITA would combine Weldy with Denyer to gain the benefits of easier alignment and higher image quality by placing the multiple sensors on a common plane. A POSITA would further incorporate Nagumo’s parallel A/D converter architecture into the Weldy/Denyer system to achieve more efficient image processing and increased signal throughput, a benefit explicitly stated as desirable in Weldy.
  • Expectation of Success: The combination involved applying known design principles (common plane alignment, parallel processing) from analogous camera systems to achieve predictable improvements in performance, quality, and efficiency.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claim 4 over Weldy, Denyer, Nagumo, and Mansoorian, and claim 5 over Weldy, Denyer, Nagumo, and Ikeda, relying on similar combination rationales and adding references for specific limitations like on-chip integration (Mansoorian) and dynamic range enhancement (Ikeda).

4. Key Claim Construction Positions

• “image sensor sensitive to [a/said] full region of visible color spectrum” (claims 1, 2, 3): Petitioner proposed this term be construed to mean an "image sensor that does not use any filter or uses a filter that does not obstruct any portion of the visible color spectrum." This construction is based on the patent’s distinction from prior art Bayer filters and its description of a fourth sensor as being "not specifically coated with a color filter" or using a "full transparent filter."
• “image sensor sensitive to a selected range of said full region of visible color spectrum” (claim 3): Petitioner proposed this term be construed as an "image sensor with a single-color color filter, such that each pixel of the image sensor is responsive to a same selected range of said full region of visible color spectrum." This is based on the patent's description of using uniform red, green, and blue filters for the color sensors, as opposed to a mosaic of different colored filters.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was not warranted because the primary prior art in its main grounds (Yamazaki, Mansoorian, Weldy, Denyer) was not applied during prosecution of the ’289 patent. While Nagumo was cited, it was not applied against the challenged claims, and the new proposed combinations present different arguments not previously considered by the USPTO.
• Petitioner noted this was the first IPR petition filed against the ’289 patent and that a motion for joinder with a pending IPR filed by Apple (IPR2019-01258) was being filed concurrently, suggesting that institution would promote efficiency.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5 of the ’289 patent as unpatentable.