Samsung Electronics Co Ltd v. Cellect LLC

1. Case Identification

• Case #: IPR2020-00566
• Patent #: 6,452,626
• Filed: February 18, 2020
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Cellect, LLC
• Challenged Claims: 1, 5, 11, 33, and 34

2. Patent Overview

• Title: Wireless Video Telephone with Reduced Area Imaging Device
• Brief Description: The ’626 patent relates to a wireless video telephone incorporating a camera module designed to have a minimal profile area. The purported novelty lies in the physical arrangement of the camera components, specifically placing an image sensor on a first plane and its associated video processing circuitry on a separate circuit board located on a second plane.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tran, Swift, and Ackland - Claims 1, 5, 11, 33, and 34

• Prior Art Relied Upon: Tran (Patent 6,202,060), Swift (WO 95/34988), and Ackland (Patent 5,835,141).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tran disclosed the foundational system: a portable computer with cellular telephone capabilities, including a camera for videoconferencing. However, Tran did not detail the camera’s internal structure. Swift allegedly supplied this missing detail by teaching a miniature CMOS camera where the image sensor lies in a first plane and a separate video processing board lies in a second plane—the core arrangement claimed in the ’626 patent. Ackland was asserted to provide the conventional implementation details for the CMOS image sensor itself, teaching an array of pixels with integrated timing and control circuitry, a feature not explicitly detailed in Swift.
  • Motivation to Combine: A POSITA would combine these references to implement Tran's videoconferencing phone with a compact, efficient camera. A POSITA would replace Tran's generic camera with Swift's miniaturized, multi-plane CMOS camera to reduce the device's overall size and cost, a key problem identified in the art. Furthermore, a POSITA would look to a reference like Ackland for well-known methods of implementing the specific pixel array and timing control circuitry for the CMOS sensor taught by Swift.
  • Expectation of Success: The combination involved applying known design principles (miniaturization through component separation) to known components (CMOS sensors, wireless phones) to achieve a predictable result.

Ground 2: Obviousness over Tran, Swift, Ackland, and CU-SeeMe - Claims 1, 5, 11, 33, and 34

• Prior Art Relied Upon: Tran, Swift, Ackland, and CU-SeeMe (a 1997 user guide).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground incorporated the combination of Tran, Swift, and Ackland from Ground 1 and added CU-SeeMe to address claim limitations related to displaying the user's own camera feed. Petitioner asserted that Tran explicitly referenced compatibility with CU-SeeMe videoconferencing software. The CU-SeeMe user guide taught a "Local Video Window" feature, which allowed a user to "see a view of whatever the camera is pointing to." This feature directly taught the limitations requiring the device's video monitor to display images from its own camera, enabling the user to "train their cameras on themselves."
  • Motivation to Combine: The motivation was explicit, as Tran itself identified CU-SeeMe as compatible software. A POSITA implementing Tran's device would naturally consult the CU-SeeMe documentation to enable its full functionality, including the local video display feature for user feedback. This combination solved the problem of providing a user with a view of their own transmitted video.
  • Expectation of Success: Integrating the described software feature (local video display) into the hardware combination from Ground 1 was argued to be a routine and predictable step for a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 2 and 4) that added Tanaka (Patent 4,700,219) to the above combinations. These grounds argued that Tanaka provided a more detailed disclosure of the "circuitry means for converting said pre-video signal to a desired video format," further rendering the claims obvious if a more explicit teaching of such circuitry was deemed necessary.

4. Key Claim Construction Positions

• Petitioner argued that two "circuitry means" terms should be construed under 35 U.S.C. §112(6) as means-plus-function limitations.
  • "[C]ircuitry means ... for timing and control of said array of CMOS pixels":
    • Function: timing and control of the array of CMOS pixels.
    • Structure: "Timing and Control Circuits" box 92 in Figure 7a of the ’626 patent.
  • "[C]ircuitry means for converting said pre-video signal to a desired video format":
    • Function: "converting said pre-video signal to a desired video format".
    • Structure: "processing circuitry which ... converts the pre-video signal to a post-video signal which may be accepted by an NTSC/PAL compatible video device," as shown in Figure 7b.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) would be inappropriate. It contended that the prior art references and combinations presented in the petition were not cited or applied during the ’626 patent's prosecution and were therefore not cumulative. Petitioner also stated that the co-pending district court litigation was in its early stages, with infringement contentions having only recently been served, weighing against denial under the Fintiv factors.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 5, 11, 33, and 34 of the ’626 patent as unpatentable under 35 U.S.C. §103.