Sony Corp v. Optimum Imaging Technologies LLC

1. Case Identification

• Case #: IPR2024-00925
• Patent #: 8,451,339
• Filed: May 20, 2024
• Petitioner(s): Sony Corporation
• Patent Owner(s): Optimum Imaging Technologies, LLC
• Challenged Claims: 1-5 and 14-18

2. Patent Overview

• Title: Digital Imaging System for Correcting Optical Image Aberrations
• Brief Description: The ’339 patent discloses systems and methods for automated correction of imaging distortions in digital cameras. The system uses a processing platform to access a database containing a plurality of optical image aberration corrections and applies a corresponding correction based on a given lens, component, or process before the final storage of the captured image.

3. Grounds for Unpatentability

Ground 1: Obviousness over Watanabe - Claims 1-2, 5, 14-15, and 17 are obvious over Watanabe.

• Prior Art Relied Upon: Watanabe (Application # 2005/0280877).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Watanabe, a publication assigned to digital camera manufacturer Ricoh, teaches a digital imaging system that performs automated processing of captured image data to correct optical aberrations. It was argued that Watanabe discloses all elements of the independent claims, including a digital camera mechanism, optical lens, digital sensor (CCD), microprocessor (CPU), digital signal processor (DSP), system software (stored programs in ROM), and a database of correction values (tables storing distortion and light intensity corrections). For claim 1, which requires a fixed focal length lens, Petitioner argued that such lenses were well-known and interchangeably used with zoom lenses, making the substitution obvious to a person of ordinary skill in the art (POSITA).
  • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
  • Expectation of Success (for §103 grounds): Not applicable (single reference ground).

Ground 2: Obviousness over Watanabe in view of Kishida - Claims 3 and 18 are obvious over Watanabe in view of Kishida.

• Prior Art Relied Upon: Watanabe (Application # 2005/0280877) and Kishida (Certified Translation of Japanese Patent Application # 2004-343358).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims reciting the correction of "vignetting" and optimizing image exposure. Petitioner argued that while Watanabe discloses correcting peripheral light intensity (which corrects vignetting), it does not explicitly describe optimizing exposure in conjunction with this correction. Kishida was introduced as teaching software for image processing that achieves both shading (vignetting) and exposure correction simultaneously, thereby reducing processing power requirements compared to prior methods. The combination allegedly provides the "optimized" exposure limitation to correct vignetting as required by the claims.
  • Motivation to Combine: A POSITA would combine Kishida's teachings with Watanabe's system to improve image processing with efficient, software-based autoexposure functionality. This would solve the known problem of correcting both exposure and vignetting while avoiding the high processing power demands of older techniques.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because Kishida's techniques were implemented in software, which could be readily integrated into the control program of Watanabe's camera system.

Ground 4: Obviousness over Takane in view of Watanabe - Claims 1-2, 5, 14-15, and 17 are obvious over Takane in view of Watanabe.

• Prior Art Relied Upon: Takane (Application # 2003/0223007) and Watanabe (Application # 2005/0280877).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Takane, the primary reference, describes a digital imaging system that corrects optical distortion using stored polynomial coefficients. Takane allegedly discloses the core components of a digital camera, including an optical unit, sensor, and a main controlling section with a CPU and image processing circuits. However, Petitioner contended that Takane leaves the specific data storage and retrieval techniques to the POSITA. Watanabe was added to supply the teaching of using organized tables (a database) and a control program (a database management system or DBMS) to store and retrieve lens-specific correction parameters based on factors like focal length and zoom position.
  • Motivation to Combine: A POSITA would have been motivated to implement the system in Takane using Watanabe's conventional database and DBMS techniques. This would provide a simplified and streamlined method for organizing, storing, and accessing the correction parameters needed for Takane's distortion correction circuits.
  • Expectation of Success: A POSITA would have reasonably expected success because Watanabe demonstrates that using database tables for correction parameters was a conventional technique compatible with Takane's system of storing parameters for different focal lengths.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Kita (Certified Translation of Japanese Patent Application # 2004-328506A) to teach the use of Fast Fourier Transform (FFT) algorithms for aberration correction (Grounds 3 and 6), and a three-way combination of Takane, Watanabe, and Kishida (Ground 5).

4. Key Claim Construction Positions

• "vignetting": Petitioner proposed that the Board adopt the construction from a prior district court litigation: "an effect in which the edges of an image are darker than the image's center." This construction was argued to be consistent with the patent's specification.
• "uses system software to identify at least one optical aberration": Citing the Patent Owner's infringement contentions in co-pending litigation, Petitioner argued this limitation is met by software that automatically corrects an aberration based on information about the optical system's configuration, such as the lens type or focal length. This implies that "identifying" the aberration is inherent in selecting the appropriate correction based on known hardware parameters.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is unwarranted. The petition was filed before the district court held an initial scheduling conference and before Petitioner filed an answer, resulting in minimal litigation investment. Petitioner also contended that the issue overlap is limited, as the IPR challenges ten claims while the litigation asserts only two.
• Denial under §325(d) was also argued to be inappropriate. Petitioner asserted that the primary references, Watanabe and Takane, and the specific combinations asserted in the grounds were never considered by the examiner during the original prosecution of the ’339 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5 and 14-18 of the ’339 patent as unpatentable.