PTAB

IPR2020-00569

Samsung Electronics Co Ltd v. Cellect LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wireless Telephone/Imaging Device
  • Brief Description: The ’036 patent describes a wireless telephone that incorporates a compact camera module. The purported novelty lies in the physical arrangement of the camera's components, specifically separating the image sensor (with its pixel array) from the video processing circuitry onto different planes or circuit boards to minimize the overall profile area and size 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 the foundational wireless videophone with a camera module. Swift taught a miniature CMOS camera with a compact design where the image sensor lies on a first plane and a separate circuit board with video processing circuitry lies on a second plane. Ackland, in turn, provided the specific implementation details for a CMOS image sensor, teaching an active pixel array with its timing and control circuitry located on the same plane as the array. Petitioner asserted that combining these references taught every limitation of claims 1, 2, 6, and 17, where the timing and control circuitry is located with the pixel array.
    • Motivation to Combine: A POSITA would combine Tran and Swift to improve Tran's videophone by incorporating Swift's smaller, more power-efficient, and well-known CMOS camera technology in place of a CCD camera. In implementing Swift's CMOS image sensor, a POSITA would naturally turn to a known configuration like that in Ackland, which taught the conventional and advantageous use of a pixel array with integrated timing control to achieve a desired frame rate. The primary motivation was to achieve a smaller, more compact device, a goal common to all three references.
    • Expectation of Success: Petitioner contended that a POSITA would have had a high expectation of success because the combination involved substituting known components (a CMOS camera for a CCD camera) and implementing a known sensor configuration (an active pixel array) according to their established functions to achieve the predictable result of a smaller wireless videophone.

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).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims 33 and 35, which require the timing and control circuitry to be placed remote from the image sensor's pixel array on a second plane. While Tran and Swift provided the base combination, Ricquier taught an alternative, well-known CMOS image sensor design where the timing controller was explicitly implemented on an off-chip driving unit, separate from the pixel array chip. Petitioner argued this off-chip placement directly taught the "remote" limitation of claims 33 and 35.
    • Motivation to Combine: A POSITA seeking to build Tran's device with Swift's compact camera would have considered the finite, predictable design choices for arranging the control circuitry. Ricquier presented the known alternative of placing timing control circuitry off-chip. This approach offered increased design flexibility, allowing components to be arranged to further minimize the device's profile area or to fit within a specific housing, a key goal in portable electronics.
    • Expectation of Success: Petitioner argued success was predictable because the placement of circuitry was a common design consideration for portable devices. Choosing between an on-chip controller (like Ackland's) and an off-chip controller (like Ricquier's) was an obvious design choice from a small number of known solutions, and a POSITA would have reasonably expected an off-chip controller to function as intended.

  • Additional Grounds: Petitioner asserted additional obviousness challenges that added Tanaka (Patent 4,700,219) to provide further detail on video processing circuitry for converting a pre-video signal to a desired format, and CU-SeeMe (a user guide explicitly referenced in Tran) to provide known methods for displaying a local camera view to the user. The motivations for these additions were to improve image quality and add conventional user interface features, respectively.

4. Key Claim Construction Positions

  • Petitioner argued that the "circuitry means" terms in the challenged claims should be construed under 35 U.S.C. §112(6) if the Patent Owner asserts they are means-plus-function limitations.
    • "[C]ircuitry means...for timing and control of said array of CMOS pixels": Petitioner identified the function as "timing and control of the array of CMOS pixels" and the corresponding structure in the ’036 patent's specification as the "Timing and Control Circuits" shown in Figure 7a.
    • "[C]ircuitry means for converting said pre-video signal to a desired video format": Petitioner identified the function as converting a pre-video signal to a desired video format and the corresponding structure as the "processing circuitry which...converts the pre-video signal to a post-video signal which may be accepted by an NTSC/PAL compatible video device" shown in Figure 7b.

5. Arguments Regarding Discretionary Denial

  • Petitioner briefly argued that discretionary denial under §314(a) would be improper, noting that the co-pending district court litigation was in its early stages, as infringement contentions had only recently been served.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 6, 17, 33, and 35 of the ’036 patent as unpatentable.