Samsung Electronics Co Ltd v. Maxell Ltd

1. Case Identification

• Case #: IPR2024-00717
• Patent #: 11,223,757
• Filed: April 19, 2024
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Image Recording Device and Image Recording Method
• Brief Description: The ’757 patent discloses an image recording device, such as a smartphone, with front and rear cameras. The core concept is using different "standby times" (i.e., delays) for different photographing processes, specifically a longer delay for a voice-activated front-camera capture (a "selfie") to allow the user to pose, and a shorter delay for a touch-activated rear-camera capture.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 and 10-11 are obvious over Chinn, Takahashi, and EX-V7

• Prior Art Relied Upon: Chinn (Application # 2014/0247368), Takahashi (Published JP Application JP2001305642A), and EX-V7 (Casio Exilim EX-V7 Users Guide).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chinn taught the fundamental device: a smartphone with front and rear cameras, a touch display, and capabilities for both voice and touch-activated photography. However, Chinn did not explicitly disclose different standby times for each mode. Takahashi addressed the known problem of a user being photographed mid-utterance during a voice-activated selfie by teaching the use of a delay timer. EX-V7, a commercially available camera, taught using a short self-timer (e.g., 2 seconds) for manual shutter activation to prevent blur from hand movement. The combination of these references, Petitioner asserted, disclosed all limitations of the independent claims, including the distinct standby times for different camera operations.
  • Motivation to Combine: A POSITA would combine these references to improve the user experience of the device in Chinn. The motivation was to solve two well-known, distinct problems: (1) incorporating Takahashi’s voice-activated delay to allow a user time to pose for a selfie, avoiding an undesirable photo taken while speaking, and (2) incorporating the short, touch-activated delay from Chinn and EX-V7 to reduce blur from hand movement when taking a standard rear-camera photo.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because implementing software-based timers was a routine skill, and combining these known solutions would predictably result in a device with improved selfie and standard photography functions.

Ground 2: Claim 9 is obvious over Chinn, Takahashi, EX-V7, and Kim

• Prior Art Relied Upon: Chinn (Application # 2014/0247368), Takahashi (Published JP Application JP2001305642A), EX-V7 (Casio Exilim EX-V7 Users Guide), and Kim (Application # 2010/0137026).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the limitations of claim 9, which added a communication unit for interacting with a server on the Internet and recording images to that server. Petitioner argued that the base combination of Chinn, Takahashi, and EX-V7 disclosed an image recording device but lacked internet/cloud storage capability. Kim taught a mobile terminal with a wireless internet module capable of operating with "web storage" to store pictures and videos on an internet server.
  • Motivation to Combine: A POSITA would be motivated to add Kim's web storage functionality to the device of the primary combination to provide users with the clear benefit of additional, externally connected cloud storage. This would free up internal device memory and allow for a larger image storage capacity, which were known advantages in the art.
  • Expectation of Success: The integration was argued to be predictable, as adding cloud storage functionality to a mobile imaging device was a known technique involving the application of existing technology (as taught by Kim) to an existing device (from the primary combination) to achieve a predictable result.

Ground 3: Claims 1-3 and 7-10 are obvious over Kim, Yamamoto, and Thorn

• Prior Art Relied Upon: Kim (Application # 2010/0137026), Yamamoto (Application # 2010/0026815), and Thorn (Application # 2009/0167881).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented an alternative combination starting with Kim as the base device, which disclosed a mobile terminal with front and rear cameras, a touch screen, and voice recognition capabilities. Yamamoto was introduced for its teaching of specific voice commands (e.g., "Say Cheese") that trigger image capture after a predetermined delay (e.g., 0.5 seconds), solving the selfie-posing problem. Thorn was added for its teaching of a system that detects if a subject is blinking during a manual image capture and, if so, introduces a short delay (e.g., 100-300 milliseconds) to wait for the blink to end. This combination allegedly met the limitation of a longer first standby time (Yamamoto's 0.5s selfie delay) than a second standby time (Thorn's ~0.25s blink-prevention delay).
  • Motivation to Combine: A POSITA would be motivated to improve the base Kim device by incorporating features from Yamamoto and Thorn. The motivation was to enhance image quality by adding Yamamoto's voice-activated selfie delay for better user composition and Thorn's blink-detection delay to avoid capturing photos with subjects' eyes closed, both of which were known problems with known solutions.
  • Expectation of Success: Success was expected as it involved implementing known software functions for delay timers and blink detection into a device already equipped with the necessary hardware (cameras, processors) to perform such tasks.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 4-6 and 11 based on the combination of Kim, Yamamoto, Thorn, and Chinn, relying on Chinn to provide teachings of a user-selectable standby time for the rear camera.

4. Key Claim Construction Positions

• Petitioner adopted, for the purposes of the petition only, the Patent Owner's apparent constructions from parallel district court litigation for two key terms.
• "first camera arranged on a same side of the touch display": Construed to mean a front-facing camera on the same face as the display unit.
• "second camera arranged on an opposite side of the touch display": Construed to mean a rear-facing camera on the face opposite the display unit.
• Petitioner noted that because the prior art discloses embodiments within the indisputable scope of these terms, the Board need not construe their outer bounds.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial is not warranted under either §314(a) or §325(b).
• §314(a) (Fintiv): Petitioner contended that the petition satisfies the "compelling merits" standard, weighing against denial based on a parallel district court proceeding.
• §325(b): Petitioner asserted that none of the prior art cited in the petition was considered during the original prosecution of the ’757 patent, and the challenges are not substantially the same as any previously considered by the USPTO.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-11 of the ’757 patent as unpatentable.