Samsung Electronics Co Ltd v. Cellect LLC

1. Case Identification

• Case #: IPR2020-00560
• Patent #: 6,982,742
• Filed: February 16, 2020
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Cellect, LLC
• Challenged Claims: 22

2. Patent Overview

• Title: Reduced Area Imaging Device for Handheld Computers
• Brief Description: The ’742 patent discloses a camera system for a handheld computer or Personal Digital Assistant (PDA). The invention's purported novelty involves a "reduced area imaging device" where the image sensor and the video processing circuitry are located on separate circuit boards or planes within the camera module to minimize the device's overall size.

3. Grounds for Unpatentability

Ground 1: Obviousness over Harris, Swift, and Ackland - Claim 22 is obvious over Harris in view of Swift and Ackland.

• Prior Art Relied Upon: Harris (Patent 6,009,336), Swift (WO 95/34988), and Ackland (Patent 5,835,141).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Harris taught the foundational system: a PDA with a detachable, wirelessly communicating camera module. To implement Harris's camera, a person of ordinary skill in the art (POSITA) would look to known compact camera designs. Swift was alleged to teach a miniature CMOS camera with a key structural feature of the ’742 patent: placing the image sensor on a first plane and the video processing circuitry on a separate, second plane. Ackland was asserted to provide the necessary implementation details for Swift's CMOS image sensor, teaching an active pixel array where the timing and control circuitry is collocated with the pixel array on the same substrate (the first plane). The combination of Harris's system, Swift's two-plane structure, and Ackland's integrated image sensor/timing circuit was argued to disclose all elements of claim 22.
  • Motivation to Combine: A POSITA would combine these references to achieve the well-understood goal of miniaturization in portable electronics. Petitioner asserted that implementing Harris's general camera concept using the specific, known space-saving CMOS architecture from Swift was a predictable design choice. Furthermore, incorporating Ackland's integrated timing-and-control circuit into Swift's image sensor was presented as an obvious implementation detail to create a more compact and efficient component, a common objective in the field. The use of CMOS technology, as taught by Swift and Ackland, was also motivated by its known advantages over CCDs, such as lower power consumption and cost.
  • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success because the combination involved applying known technologies (compact CMOS camera design) to a known system (a PDA with a camera) to achieve a predictable result (a smaller device). The integration was framed as a "predictable use of prior art elements according to their established functions."

Ground 2: Obviousness over Harris, Swift, Ackland, and Tanaka - Claim 22 is obvious over Harris in view of Swift, Ackland, and Tanaka.

• Prior Art Relied Upon: Harris (Patent 6,009,336), Swift (WO 95/34988), Ackland (Patent 5,835,141), and Tanaka (Patent 4,700,219).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground supplemented the combination of Harris, Swift, and Ackland with the teachings of Tanaka. Petitioner presented this ground to address the "circuitry means for converting said pre-video signal to a desired video format" limitation in greater detail. While Swift taught a video processor on its second circuit board, Tanaka was asserted to disclose a more detailed implementation of such a video processing circuit. Specifically, Tanaka taught a circuit that converts an imager's output into a composite color video signal, including elements like a white-balancing circuit, gain control, and a modulator, which Petitioner argued were functionally identical to the processing circuitry disclosed in the ’742 patent.
  • Motivation to Combine: A POSITA would be motivated to incorporate Tanaka’s teachings into the Harris/Swift/Ackland camera system to improve image quality. Petitioner argued that Tanaka expressly taught methods for producing higher-quality video with more accurate colors by processing luminance and color difference signals. Applying these known video processing techniques to improve the output of the combined camera system was presented as a straightforward and desirable enhancement.
  • Expectation of Success: Success was expected because Tanaka's processing techniques were well-established for improving video signals from image sensors. Petitioner argued that applying these known processing methods to the output of the CMOS sensor from the primary combination would predictably result in better image quality without undue experimentation.

4. Key Claim Construction Positions

• Petitioner contended that two means-plus-function-style terms in claim 22—"[C]ircuitry means ... for timing and control..." and "[C]ircuitry means for converting said pre-video signal..."—should not be governed by 35 U.S.C. §112(6) because the term "circuitry" provides sufficient structure. However, Petitioner provided alternative constructions under §112(6) based on the patent specification. This position was central to the petition's structure, as Petitioner argued that claim 22 was obvious under either construction, applying the Patent Owner's apparent constructions from parallel litigation to preemptively counter arguments.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §314(a) or §325(d). It asserted that the grounds were new and noncumulative, as the specific combinations of Harris, Swift, Ackland, and Tanaka were never considered by the Examiner during prosecution. Petitioner also argued that the co-pending district court litigation was in its very early stages, with infringement contentions only recently served, making inter partes review (IPR) an efficient alternative to resolve the validity dispute.

6. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claim 22 of Patent 6,982,742 as unpatentable under 35 U.S.C. §103.