Apple Inc v. Maxell Ltd

1. Case Identification

• Case #: IPR2021-00367
• Patent #: 10,176,848
• Filed: December 23, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 8, 10-13, and 15-20

2. Patent Overview

• Title: Recording and Reproducing Apparatus and Method
• Brief Description: The ’848 patent describes a system for recording image information, identifying a specific individual as a "very important person" (VIP) using facial recognition, and selectively reproducing images or video chapters that contain the registered VIP. The system allows a user to register a VIP either from a newly captured photo or from a list of previously identified individuals.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gallagher and Nakashima - Claims 8, 10-13, and 15-20 are obvious over Gallagher in view of Nakashima.

• Prior Art Relied Upon: Gallagher (Application # 2007/0098303) and Nakashima (Application # 2007/0019083).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gallagher, the primary reference, discloses a recording and reproducing apparatus that performs nearly all steps of the challenged claims. Gallagher teaches a system that can register a person of interest from an existing digital image collection, extract facial features, and then selectively reproduce a subset of images from the collection believed to contain that person. However, Petitioner contended that Gallagher only discloses registering a person from a previously stored image (the claimed "second setting mode") and does not explicitly teach registering a person using a newly captured photograph (the claimed "first setting mode").
  • To supply this missing limitation, Petitioner asserted that Nakashima explicitly teaches the two registration modes claimed in the ’848 patent. Nakashima describes registering a facial image by either "individually photographing the face of [a] subject" or by using a previously stored photo. The combination of Gallagher's system with Nakashima’s registration options would render the claimed invention obvious.
  • For dependent claims, Petitioner argued Gallagher’s adjustable probability threshold (T₀) for filtering search results meets the limitations for setting "importance level" (claim 10) and establishing different "reproducing modes" (claims 11-12). A higher T₀ value results in a smaller, higher-confidence subset of images, corresponding to a higher importance level and a faster reproduction time, while a lower T₀ value returns more images.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Nakashima's teachings with Gallagher's system for a simple and predictable reason: to improve the system's performance. Gallagher’s registration process relies on existing photos, which may not provide a clear, high-quality facial image for use as a reference template. Nakashima teaches that using a newly captured photo ensures the reference image is "photographed at clear and appropriate sizes." A POSITA would have been motivated to add this new-photo registration option to Gallagher to improve the accuracy of the facial recognition and subsequent selective reproduction, which was a known technique to improve similar devices.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because implementing this modification would be straightforward. Gallagher already disclosed the necessary hardware for capturing images (e.g., a camera phone with a CMOS sensor and digital processor). Modifying its software to add a "photograph now" option for registration, as taught by Nakashima, would have been a simple and predictable design choice.

4. Key Claim Construction Positions

• "register a person in the image information as a specific person": Petitioner proposed this term be construed as "identify and record a portion of an image as being the reference face image of a specific person." This construction emphasizes that registration is the act of creating a reference or template face that the system then uses to find that person in other images.
• "[when the first setting mode is set,] a person with a face is obtained by newly photographing the person...": Petitioner proposed construing this phrase to mean that the "image of a person's face is obtained by newly photographing the person and the resulting image information is recorded... as being the reference face image." This construction is central to the obviousness argument, as it defines the "first setting mode" as the specific functionality that Petitioner alleged was missing from Gallagher but supplied by Nakashima.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The core arguments were:
  • The parallel district court litigation would be stayed pending the outcome of a co-pending ITC investigation, meaning any district court trial date was years away and would not precede a Final Written Decision (FWD) from the PTAB.
  • The ITC investigation is not a true "parallel proceeding" for Fintiv purposes because the ITC lacks the statutory authority to invalidate and cancel patent claims, meaning it cannot provide the same relief as an inter partes review (IPR). Therefore, denying institution would not promote efficiency, as the patent’s validity would still need to be litigated in district court regardless of the ITC outcome.
  • Petitioner asserted that the invalidity grounds presented in the IPR petition (Gallagher in view of Nakashima) were distinct from the theories being pursued in the ITC investigation, reducing any potential overlap.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 8, 10-13, and 15-20 of the ’848 patent as unpatentable.