PTAB

IPR2020-00569

Samsung Electronics Co., Ltd. v. Cellect, LLC

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1. Case Identification

2. Patent Overview

  • Title: Wireless Telephone with Integrated Camera Module
  • Brief Description: The ’036 patent relates to a wireless telephone that incorporates a camera module. The purported invention focuses on a specific physical arrangement of components, such as placing the image sensor and the video processing circuitry on separate, parallel circuit boards to reduce the overall profile area of the imaging device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tran, Swift, and Ackland - Claims 1, 2, 6, and 17 are obvious over Tran in view of Swift and Ackland.

  • 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 a portable computer with cellular telephone capabilities and a camera module. Swift taught a miniature CMOS camera where the image sensor lies in a first plane and is connected to a video processing board lying in a second, parallel plane. Ackland taught the specific implementation of a CMOS image sensor having an active pixel array with its timing and control circuitry collocated on the same chip. Petitioner asserted that combining these references taught all elements of independent claim 1, including a wireless telephone with a camera module containing a CMOS pixel array and timing circuitry on a first plane, and a separate circuit board on a second plane for converting the pre-video signal to a desired format.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references to improve Tran's device by replacing its CCD camera with Swift's more compact and power-efficient CMOS camera. It would have been a simple design choice to use Ackland's well-understood active pixel array with on-chip timing controls to implement Swift's CMOS sensor, as this was a standard configuration for such sensors.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying known technologies (miniature CMOS cameras, standard sensor layouts) to a known device (a wireless phone) to achieve the predictable result of a smaller, integrated camera phone.

Ground 2: Obviousness over Tran, Swift, and Ricquier - Claims 33 and 35 are obvious over Tran in view of Swift and Ricquier.

  • Prior Art Relied Upon: Tran (Patent 6,202,060), Swift (WO 95/34988), and Ricquier (a 1994 conference paper, "CIVIS sensor").

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground challenges claims 33 and 35, which require the timing and control circuitry to be placed "remote" from the pixel array on a second plane. While Tran and Swift provided the basic wireless phone with a multi-plane camera, Petitioner argued that Ricquier taught an imager with an "off-chip" timing controller that was separate from the CMOS pixel array. This off-chip controller provided the timing and control signals to the pixel array.
    • Motivation to Combine: The primary motivation to substitute Ricquier's teaching for Ackland's was design flexibility. A POSITA would recognize that separating the timing controller from the sensor chip, as taught by Ricquier, was a known design choice that offered more options for component placement to minimize the overall device profile area. This directly addressed the stated goal of the ’036 patent.
    • Expectation of Success: Placing the timing controller off-chip was one of a finite number of predictable design solutions for arranging camera components. A POSITA would have reasonably expected this configuration to work successfully.

  • Additional Grounds: Petitioner asserted additional obviousness challenges against all claims by adding CU-SeeMe and/or Tanaka to the primary combinations. CU-SeeMe (a videoconferencing software explicitly referenced in Tran) was used to further teach the "video monitor" limitations by disclosing a local video window that allows a user to see their own camera's output. Tanaka (Patent 4,700,219) was used to provide extensive detail on a video processor circuit, bolstering arguments that the "circuitry means for converting" a pre-video signal was well-known and obvious.

4. Key Claim Construction Positions

  • The petition contended that the "circuitry means..." terms recited in the challenged claims (e.g., "circuitry means...for timing and control," "circuitry means for converting said pre-video signal") are not governed by 35 U.S.C. §112(6). Petitioner argued the term "circuitry" itself connotes sufficient structure to avoid means-plus-function treatment under Federal Circuit precedent.
  • In the alternative, should the Board construe these terms under §112(6), Petitioner proposed functions and corresponding structures based on the ’036 patent’s specification. For the timing and control function, the proposed structure was the "Timing and Control Circuits" of Fig. 7a. For the video conversion function, the proposed structure was the "processing circuitry" of Fig. 7b.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §314(a) and §325(d). It asserted that the co-pending district court litigation was in its very early stages, with infringement contentions having been served only two months prior to the IPR filing, and therefore the Fintiv factors weighed against denial.
  • The petition also contended that the grounds were not cumulative of art previously considered by the USPTO during prosecution, as the key prior art references (Tran, Swift, Ackland, Ricquier) were not before the Examiner.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1, 2, 6, 17, 33, and 35 of the ’036 patent as unpatentable under 35 U.S.C. §103.