Arashi Vision Inc v. GoPro Inc

1. Case Identification

• Case #: IPR2024-00984
• Patent #: 10,015,413
• Filed: June 20, 2024
• Petitioner(s): Arashi Vision (U.S.) LLC (d/b/a Insta360)
• Patent Owner(s): GoPro, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Image Capture with Aspect Ratio Conversion
• Brief Description: The ’413 patent discloses systems and methods for converting an input image from a source aspect ratio to a target aspect ratio. The conversion applies a non-uniform transformation that shifts pixels, resulting in a "portion" of the image (e.g., the center) having less compression or enlargement compared to other regions of the image.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fleming - Claims 1-8, 10, 12-16, 18, and 20 are obvious over Fleming

• Prior Art Relied Upon: Fleming (Patent 7,158,158)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Fleming discloses a system for nonlinear scaling of video images to convert from a first aspect ratio to a second. Fleming explicitly teaches maintaining the original aspect ratio in a central area of interest while gradually stretching or compressing the image in other areas toward the edges. This directly teaches the core limitation of independent claims 1, 2, and 13, which require a transformation that non-uniformly shifts pixels such that the "differences" (i.e., amount of scaling) in a subset of pixels within a central "portion" are less than the "differences" in other pixels. Fleming's disclosure of applying scaling in both horizontal and vertical directions was also argued to meet limitations related to transforming along two axes.
  • Motivation to Combine (for §103 grounds): N/A (single reference ground).
  • Expectation of Success (for §103 grounds): N/A (single reference ground).
  • Key Aspects: For dependent claims related to implementing the system in a camera (e.g., claim 6), Petitioner argued it would have been an obvious design choice to integrate Fleming’s known data processing system into a digital camera to provide on-camera processing, which was a known technique to improve device functionality and convenience.

Ground 2: Obviousness over Fleming and Liu - Claims 9, 11, 17, and 19 are obvious over Fleming in view of Liu

• Prior Art Relied Upon: Fleming (Patent 7,158,158), Liu (Patent 8,649,635)
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Fleming by adding Liu to address claims requiring a "non-center portion" (claim 9) or determining the portion based on an object's location (claim 11). Petitioner contended that while Fleming focuses on preserving a central portion, Liu teaches an image scaling method that specifically identifies main objects in a source image and applies non-linear scaling to preserve those objects, regardless of their location. Liu explicitly discloses scenarios where main objects are in the "lower part of the image," thus teaching the selection of a non-center portion for preservation.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Fleming and Liu to improve the image scaling process for cases where the main object of interest is not in the center of the image. Liu itself identifies the problem that standard horizontal scaling (like Fleming's) distorts objects at the edge of an image. Therefore, a POSITA would have been motivated to incorporate Liu’s object-based scaling approach into a system like Fleming's to "prevent distortion of the target image in the important area to which human eyes are sensitive," yielding predictable and improved results.
  • Expectation of Success (for §103 grounds): Petitioner argued a POSITA would have had a reasonable expectation of success, as the combination involves applying Liu’s known method for selecting a preservation region to Fleming’s known scaling technique to improve a known problem.

Ground 3: Obviousness over Meulen and Chao - Claims 1-20 are obvious over Meulen in view of Chao

• Prior Art Relied Upon: Meulen (Patent 7,693,500), Chao (Application # 2008/0095470)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Meulen, which discloses a wireless device, teaches applying different amounts of compression or scaling to different regions of an image to fit a display. Meulen explicitly describes applying "no compression/scaling in the central region" while applying progressively higher compression ratios (e.g., 2:1 and 4:1) in lateral regions toward the edges. This was argued to teach the core "differences" relationship of the independent claims. However, Meulen does not detail how to perform the scaling via pixel shifting. Chao was introduced to supply this missing detail, as it discloses non-uniform scaling by resizing foreground and background elements differently, which inherently involves "stretching" or "shrinking" that a POSITA would understand as shifting pixel positions.
  • Motivation to Combine (for §103 grounds): A POSITA, seeking to implement the non-uniform compression scheme taught by Meulen, would have been motivated to look to known scaling techniques for implementation details. Chao provided a known and suitable technique for achieving non-uniform scaling by shifting pixels of different image elements (foreground/background) at different rates. The combination would have been a predictable implementation of Meulen’s concept using Chao’s known methods.
  • Expectation of Success (for §103 grounds): The combination involved using a known implementation method (Chao) to realize a disclosed concept (Meulen), which would have provided a POSITA with a high expectation of success.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-20 based on the combination of Obara (Application # 2006/0279583) and Liu, relying on similar theories where Obara provided the primary non-linear scaling teachings and Liu provided the method for object-based portion selection.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate because the parallel litigation is a U.S. International Trade Commission (ITC) proceeding. The petition asserted that Fintiv factors are directed at district court litigation, and the ITC lacks authority to invalidate a patent.
• Petitioner further argued that denial under §325(d) is unwarranted because the petition raises new prior art and arguments not previously presented to the USPTO. The references asserted in the petition (Fleming, Liu, Obara, Meulen, Chao) were not considered during prosecution. Unlike the art cited by the examiner, the asserted references explicitly teach the key "differences" relationship that was the basis for allowance of the ’413 patent claims.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 10,015,413 as unpatentable.