PTAB
IPR2020-00512
Samsung Electronics Co Ltd v. Cellect LLC
1. Case Identification
- Case #: IPR2020-00512
- Patent #: 9,186,052
- Filed: February 17, 2020
- Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
- Patent Owner(s): Cellect, LLC
- Challenged Claims: 2
2. Patent Overview
- Title: Reduced Area Imaging Device
- Brief Description: The ’052 patent relates to a reduced-area imaging device, such as for an endoscope, designed to minimize its physical profile. The purported invention achieves this by arranging the image sensor and its timing circuitry on a "first plane" and the video processing circuitry on a separate "second plane" in a stacked configuration.
3. Grounds for Unpatentability
Ground 1: Obviousness over Swift, Ricquier, and Suzuki - Claim 2 is obvious over Swift in view of Ricquier and Suzuki.
- Prior Art Relied Upon: Swift (WO Application Publication No. 95/34988), Ricquier (a 1994 conference paper on CMOS imagers), and Suzuki (Patent 5,233,426).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Swift taught the core concept of a miniature video camera with an image sensor (a CMOS Active Pixel Sensor) on a first circuit board and separate processing circuitry on a second circuit board to convert a pre-video signal to a post-video signal. While Swift disclosed multiple component orientations, its primary embodiment showed the boards at a right angle. Ricquier, a paper on CMOS sensor architecture, supplied implementation details that Petitioner asserted were applicable to Swift, such as arranging CMOS pixels in an array and using an off-chip timing controller. Finally, Suzuki taught arranging multiple circuit boards in a parallel, stacked configuration to create a more compact camera head. Suzuki also disclosed an image sensor with a largest dimension between 8.5 mm and 10 mm, satisfying the claimed 2-12 mm range.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Swift's miniature camera with Ricquier's teachings on CMOS pixel arrays and off-chip controllers because they are from the same field of solid-state image sensors and address the common goal of miniaturization. A POSITA would then be motivated to modify the Swift/Ricquier combination with Suzuki's stacked, parallel board arrangement. This modification directly furthered Swift’s stated objective of making the camera as small as possible and was a known method for improving device compactness, stability, and reliability.
- Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the references involved the predictable application of known design principles—implementing a standard CMOS array architecture (Ricquier) in a miniature camera (Swift) and using a known space-saving layout (Suzuki)—to achieve the expected result of a smaller, more compact imaging device.
Ground 2: Obviousness over Larson, Swift, Ricquier, and Suzuki - Claim 2 is obvious over Larson in view of Swift, Ricquier, and Suzuki.
- Prior Art Relied Upon: Larson (Patent 5,541,640), Swift (WO Application Publication No. 95/34988), Ricquier (a 1994 conference paper), and Suzuki (Patent 5,233,426).
- Core Argument for this Ground:
- Prior Art Mapping: This ground incorporated all teachings from the combination of Swift, Ricquier, and Suzuki as asserted in Ground 1. Petitioner introduced Larson to address the claim limitation of a video screen integrated within the same housing as the camera. Swift disclosed a camera connected via a cable to an external video monitor. Larson, however, explicitly taught a videophone that integrated both a video camera and a flat-panel display screen within a single, compact housing. Larson disclosed that this integrated design makes the device more compact and power-efficient.
- Motivation to Combine: A POSITA would have been motivated to modify the camera of Swift/Ricquier/Suzuki by incorporating the integrated display taught by Larson. Petitioner argued this was an obvious design choice to enhance portability and convenience by creating a self-contained imaging device. The motivation was to solve the known problem of creating a compact, all-in-one device, as demonstrated by Larson's videophone. This modification merely combined known elements for their intended purposes.
- Expectation of Success: Integrating a camera and display into a single housing was a well-known and predictable design choice in the art. A POSITA would have expected this combination to function as intended without any undue experimentation, resulting in a portable imaging device with an integrated screen.
4. Arguments Regarding Discretionary Denial
- Petitioner argued that discretionary denial under 35 U.S.C. §314(a) was inappropriate. The petition asserted that the co-pending district court litigation was in its early stages, as the Patent Owner had only recently served its infringement contentions. Furthermore, Petitioner contended that the asserted prior art and grounds were new and non-cumulative to the art considered by the Examiner during the original prosecution of the ’052 patent.
5. Relief Requested
- Petitioner requested the institution of an inter partes review and the cancellation of claim 2 of Patent 9,186,052 as unpatentable under 35 U.S.C. §103.