Google LLC v. 138 East LCD Advancements Ltd

1. Case Identification

• Case #: IPR2024-00961
• Patent #: 7,945,109
• Filed: June 21, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): 138 East LCD Advancements Limited
• Challenged Claims: 1-3

2. Patent Overview

• Title: Image Processing Technique Using Major Object Information
• Brief Description: The ’109 patent discloses an image processing technique for portrait images. The system improves upon conventional methods by acquiring an image file that includes not only image data but also specific location information for a person within the image, and then using that location information to define an emphasis region for processing.

3. Grounds for Unpatentability

Ground 1: Obviousness over Onuki and Luo-668 - Claims 1-3 are obvious over Onuki in view of Luo-668.

• Prior Art Relied Upon: Onuki (Patent 6,556,784) and Luo-668 (Patent 7,212,668).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Onuki discloses nearly all limitations of the challenged claims. Onuki describes a digital camera system that records image data along with "photo-taking information," including the photo-taking mode (e.g., "portrait mode") and the "main object location." An image reproducing apparatus then acquires this information, separates the main object from the background based on the location information, and decreases the sharpness of the background (i.e., blurring it). Petitioner contended that the only missing element is the explicit step of increasing the sharpness of the main object. This step, Petitioner asserted, is explicitly taught by Luo-668, which describes processing image pixels to emphasize a main subject by increasing the sharpness of the main subject pixels while reducing the sharpness of the background.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Onuki and Luo-668 to further enhance the main subject in a portrait photograph, a primary goal of portrait photography. Onuki teaches that the main object in portrait mode should be "focused." Luo-668 provides a well-known method—increasing sharpness—to improve perceived focus, compensate for optical limitations, or counteract sharpness loss from printing. A POSITA would have been motivated to apply Luo-668’s sharpening technique to the main object isolated by Onuki’s method to achieve a better final image.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success. Onuki already teaches isolating the main object image from the background. Applying a conventional and predictable image-sharpening technique, as taught by Luo-668, to this cleanly separated object image would predictably result in a sharpened subject against a blurred background, without undue experimentation.

Ground 2: Obviousness over Onuki, Luo-668, and Exif - Claims 1-3 are obvious over Onuki and Luo-668 in view of Exif.

• Prior Art Relied Upon: Onuki (Patent 6,556,784), Luo-668 (Patent 7,212,668), and Exif (Digital Still Camera Image File Format Standard, Version 2.1, June 1998).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground reinforces Ground 1 by explicitly addressing the claim limitation of "acquiring an image file" containing the specified data. Petitioner argued that to the extent Onuki's disclosure of storing an "image signal" and "photo-taking information" "together" on a PC card is not considered an "image file," the Exif standard supplies the missing detail. Exif was the prevailing industry standard for digital camera image files and specifies a format that includes image data along with metadata tags. Critically, Exif defines an ExposureProgram tag to indicate the shooting scene (e.g., portrait mode) and a SubjectLocation tag to indicate the location of the main subject, directly corresponding to the information used in Onuki's system.
  • Motivation to Combine: A POSITA implementing the system described in Onuki would have been motivated to use the standard Exif file format to ensure compatibility and interoperability. Using a standard format like Exif to store the image data, photo-taking mode, and main object location together in a single file was a convenient, well-known, and advantageous method. This would simplify the development of software for the image reproducing apparatus, as reading Exif files was a common capability.
  • Expectation of Success: A POSITA would have reasonably expected success in combining Onuki's processing logic with the Exif file standard. Exif was designed precisely for this purpose: to store image data and associated picture-taking conditions together in a standardized way. The ’109 patent itself acknowledges that using tags in an Exif format was "well-known." Therefore, applying this standard format to Onuki's system would have been a routine implementation choice with predictable results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §314(a) (Fintiv) and §325(d).
• Fintiv Factors: Petitioner asserted that the parallel district court litigation was dismissed on patent-ineligible subject matter grounds under §101 before any significant investment in discovery or claim construction occurred. With no overlapping invalidity issues presented and no trial date, Petitioner argued the Fintiv factors strongly favor institution.
• §325(d) Factors: Petitioner contended that the primary prior art references—Onuki, Luo-668, and Exif—were not before the examiner during the original prosecution. The examiner's reason for allowance was that prior art did not teach increasing the sharpness of a person-area while decreasing it elsewhere. Petitioner argued that Luo-668 directly teaches this, and had the examiner been aware of the asserted art, the claims would not have been allowed.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3 of Patent 7,945,109 as unpatentable.