PTAB

IPR2024-00867

Samsung Electronics Co Ltd v. Maxell Ltd

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Recording and Reproducing Apparatus
  • Brief Description: The ’848 patent discloses a recording and reproducing apparatus, such as a video camera, capable of identifying and registering individuals using face recognition. The apparatus can segment video into chapters based on when a registered person appears and selectively reproduce video content that includes that person.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nozaki and Haitani - Claims 11-12, 16-17, and 19-20 are obvious over Nozaki in view of Haitani.

  • Prior Art Relied Upon: Nozaki (WO 2007/060980) and Haitani (Patent 9,665,597).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nozaki, a reference disclosing an electronic camera with face-recognition functions, teaches the core limitations of the challenged claims’ underlying independent claims (cancelled claims 8, 13, and 18). Nozaki’s system can capture images, perform face recognition, and register specific individuals using two modes: a "new" mode by taking a new photograph and a "regeneration" mode by selecting a face from a previously stored image. Petitioner contended that Haitani teaches the remaining limitations related to multiple reproducing modes. Haitani discloses a handheld device that uses filters, including face-recognition data, to selectively display images. A user can combine filters (e.g., face recognition plus a time filter) to create different reproducing modes that produce narrower or broader search results.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Nozaki and Haitani as they are analogous arts addressing image management in digital cameras. A POSITA would have been motivated to incorporate Haitani's filter-based search and reproduction features into Nozaki’s device to improve the efficiency of locating and reproducing specific images from a large library, a known problem in the art.
    • Expectation of Success: A POSITA would have had a high expectation of success because Haitani’s filtering methods are compatible with the types of data (e.g., face-recognition, date/time) already generated and organized by Nozaki’s device. Implementing this combination would have involved a simple and predictable modification.

Ground 2: Obviousness over Nozaki, Haitani, and Graham - Claim 84 is obvious over Nozaki and Haitani in view of Graham.

  • Prior Art Relied Upon: Nozaki (WO 2007/060980), Haitani (Patent 9,665,597), and Graham (Application # 2004/0095376).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nozaki and Haitani teach most limitations of claim 84, including the core face-registration and selective reproduction functionalities, as detailed in Ground 1. For the remaining limitations related to video scene segmentation and thumbnail generation (e.g., limitations 84h.i and 84h.ii), Petitioner relied on Graham. Graham discloses a method for retrieving and displaying video information by extracting "video keyframes" at a specified sampling rate and displaying corresponding thumbnail images in a vertical interface, allowing a user to navigate a video by its key segments.
    • Motivation to Combine: A POSITA would combine Graham’s teachings with the Nozaki/Haitani system to improve the efficiency of searching for specific moments within a long video file. Petitioner asserted that Graham’s method of segmenting video into keyframe chapters and displaying selectable thumbnails is compatible with Nozaki’s reproduction software. The face-detection data in Nozaki could be used as a method to identify the keyframes taught by Graham, making the combination logical and beneficial.

Ground 3: Obviousness over Nozaki, Haitani, and Kim - Claim 84 is obvious over Nozaki and Haitani in view of Kim.

  • Prior Art Relied Upon: Nozaki (WO 2007/060980), Haitani (Patent 9,665,597), and Kim (Korean Unexamined Patent Publication No. 2007/0017068A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Similar to Ground 2, Petitioner argued that Nozaki and Haitani render most of claim 84 obvious. The incremental teachings for video segmentation and thumbnail generation are provided by Kim. Kim discloses a "video partitioning" technique that extracts keyframes from a video "shot" to automatically index it into chapters or partitions. Critically, Kim explicitly teaches using a "face detecting unit" to help identify when to create a keyframe for segmenting the video. Kim also discloses displaying a "topic list" of these chapters as selectable thumbnail images.
    • Motivation to Combine: The motivation is similar to that for combining Graham. A POSITA would have been motivated to incorporate Kim’s automatic video segmenting functionality into the Nozaki device to improve a user’s ability to search and locate people in lengthy video files. Petitioner argued that Kim’s use of face detection to create keyframes is directly compatible with Nozaki’s face-recognition technology, making the integration straightforward and predictable.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) is not warranted because the petition satisfies the "compelling merits" standard.
  • Petitioner further argued that denial under §325(d) would be improper. None of the prior art references (Nozaki, Haitani, Graham, Kim) were expressly considered during the original prosecution or subsequent reexamination of the ’848 patent. To the extent the art is considered cumulative, Petitioner asserted the examiner made a clear error in allowing the claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 11-12, 16-17, 19-20, and 84 of the ’848 patent as unpatentable.