Google LLC v. 138 East LCD Advancements Ltd

1. Case Identification

• Case #: IPR2024-00959
• Patent #: 7,428,082
• Filed: June 20, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): 138 East LCD Advancements Limited
• Challenged Claims: 1-10

2. Patent Overview

• Title: Image Related Data Generator and Processing System
• Brief Description: The ’082 patent describes a system for processing image data based on associated image processing control data. The system includes an "image related data generator," such as a digital camera, which can connect to a server to download and update control data (e.g., profiles for specific printers) to improve image output quality.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-6, and 10 are obvious over Kuwata in view of Fisher.

• Prior Art Relied Upon: Kuwata (Application # 2002/0030833) and Fisher (Application # 2001/0025303).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kuwata taught a digital camera system that generates image files containing both image data and pre-stored "preset conditions" (image processing control data) optimized for a specific output device like a printer. However, Kuwata did not explicitly teach connecting this camera to a server to update these presets. Fisher was alleged to supply this missing element, as it disclosed an electronic camera with an I/O interface for communicating with an internet server to download "ancillary data files" that could update or add camera functionality.
  • Motivation to Combine: A POSITA would combine Fisher's server connectivity with Kuwata's system to enhance its functionality. This would allow a user to download new or updated preset conditions for printers released after the camera's manufacture, predictably improving image quality for a wider range of devices and relieving users of laborious manual configuration.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involved implementing a known technique (server connectivity) into a similar device (a digital camera). Both references used conventional camera components, and network communications were ubiquitous and standardized, making the integration of Fisher's functionality into Kuwata's existing I/O ports a straightforward application of known methods.

Ground 2: Claims 1-6 and 10 are obvious over Kuwata, Fisher, and Ohga.

• Prior Art Relied Upon: Kuwata (Application # 2002/0030833), Fisher (Application # 2001/0025303), and Ohga (Patent 6,788,305).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Kuwata and Fisher, adding Ohga to explicitly teach updating control data "based on specification data." Petitioner argued that if the primary combination was deemed insufficient, Ohga supplied this teaching. Ohga disclosed a networked image processing system where a PC downloads specific color profiles from a server based on a user selecting a "given profile name." Petitioner contended this profile name constitutes "specification data" that specifies the control data to be updated.
  • Motivation to Combine: A POSITA would be motivated to incorporate Ohga’s use of specific identifiers to request data from a server into the Kuwata/Fisher system. This would improve network efficiency by allowing the camera to request and download only the precise profiles needed, rather than potentially larger, more generic data files.
  • Expectation of Success: Success was expected because using specification data (like a file name or unique identifier) to request specific information from a server was a well-known and fundamental principle of network communications at the time.

Ground 3: Claim 9 is anticipated by, or alternatively obvious over, Ohga.

• Prior Art Relied Upon: Ohga (Patent 6,788,305).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Ohga taught every step of the method recited in claim 9. Ohga’s system was a method for transmitting update data (color profiles) for image processing control to a peripheral device (a computer). The method involved: [9a] providing update data (input/output profiles) associated with identification data (device names); [9b] inputting predetermined data from the peripheral (the user selecting a profile name); and [9c] transmitting the corresponding update data (the selected profile) to the peripheral device. Petitioner asserted this mapping satisfied all limitations for anticipation or, at a minimum, rendered the claim obvious.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 7 is obvious over Kuwata and Ohga, and claim 8 is obvious over Ohga and Kuwata. These grounds relied on similar principles of combining server connectivity and profile management with a personal computer-based image editor or a server-based data transmission apparatus.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued that discretionary denial under Fintiv is not warranted because there is no active parallel district court litigation. The related case was closed after the plaintiff voluntarily dismissed its claims asserting infringement of the ’082 patent. Key litigation milestones, such as claim construction and substantive discovery, had not occurred before dismissal.
• §325(d): Petitioner contended that denial under §325(d) would be improper because the primary prior art references (Kuwata, Fisher, and Ohga) were not considered during the original examination. Furthermore, these references were argued to teach key limitations that the applicant added during prosecution to overcome rejections, suggesting the Examiner would not have allowed the claims had this art been considered.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-10 of Patent 7,428,082 as unpatentable.