Arashi Vision Inc v. GoPro Inc

1. Case Identification

• Case #: IPR2024-01164
• Patent #: 10,958,840
• Filed: July 12, 2024
• Petitioner(s): Arashi Vision (U.S.) LLC (d/b/a Insta360)
• Patent Owner(s): GoPro, Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Image Capture System and Method for Stabilizing Videos
• Brief Description: The ’840 patent relates to a system for stabilizing video content captured by an image capture device. The technology generates a smoothed motion trajectory by analyzing a "look-ahead" portion of the device's actual trajectory and uses this smoothed trajectory to determine the placement of a cropped viewing window within the full captured frame to produce the stabilized video.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bell and Shi - Claims 1-3, 5, 8-11, 14, 16, 18, and 19 are obvious over Bell in view of Shi.

• Prior Art Relied Upon: Bell (Patent 10,027,893) and Shi (Patent 10,462,370).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bell teaches the core limitations of independent claims 1 and 16. Bell discloses a real-time video stabilization system for mobile devices that determines a device’s trajectory from on-board motion sensors, uses a "look-ahead buffer" of future motion data to calculate a "smoother path" (the smoothed trajectory), and generates stabilized video by warping a "crop polygon" (the viewing window) that is smaller than the full input frame. To meet the "low-light high-pass parameter" limitation of claim 14, Petitioner asserted that Shi teaches a method to reduce motion blur, a known problem in low-light conditions, by adjusting the amount of smoothing based on the amount of blur detected. Shi’s "coefficient based on the motion blur kernel" was alleged to be the claimed parameter.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Bell with Shi to improve the performance of Bell's stabilization system. Given that videos captured by mobile devices are often affected by motion blur, a POSITA would have been motivated to incorporate Shi's known technique for motion blur compensation into Bell's otherwise similar stabilization framework to make it more robust.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because both references are directed to video stabilization on mobile devices and use look-ahead frames, making the integration of Shi's blur compensation technique into Bell's system predictable.

Ground 2: Obviousness over Bell, Shi, and Karpenko - Claims 4 and 20 are obvious over Bell and Shi in view of Karpenko.

• Prior Art Relied Upon: Bell (Patent 10,027,893), Shi (Patent 10,462,370), and Karpenko (Patent 9,071,756).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued this combination renders claim 4 obvious, which depends from claim 3 and adds determining the smoothed trajectory via "iterations of smoothing including a fine scale approach...and a coarse approach." Karpenko was introduced to teach this limitation, as it explicitly discloses a method to "improve the efficiency" of a smoothing algorithm by "running it in coarse to fine mode." This approach allows the algorithm to converge on a smoothed trajectory with fewer iterations.
  • Motivation to Combine: The primary motivation to add Karpenko's teaching to the Bell/Shi combination was to improve computational efficiency. Bell is directed to "real-time" stabilization on mobile devices with limited processing power, a context where efficiency is a critical concern. A POSITA would therefore have been motivated to adopt Karpenko's known coarse-to-fine optimization strategy to reduce processing requirements and latency in the Bell/Shi system.
  • Expectation of Success: Success would be expected because Karpenko's iterative, constraint-based smoothing method is analogous to the approach in Bell, facilitating a straightforward and predictable combination.

Ground 3: Obviousness over Bell, Shi, and Bell Paper - Claims 6, 7, and 21 are obvious over Bell and Shi in view of Bell Paper.

• Prior Art Relied Upon: Bell (Patent 10,027,893), Shi (Patent 10,462,370), and Bell Paper (a 2014 publication titled "A Non-Linear Filter for Gyroscope-Based Video Stabilization").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted this combination renders claim 6 obvious, which requires determining the smoothed trajectory based on the "minimization of a value, a score, or a metric that expresses an amount of high frequencies while respecting a crop constraint." The Bell Paper, which shares inventors with the Bell patent, allegedly teaches this by disclosing a method that "removes most of the angular acceleration" and fixes the virtual camera when nearly still to remove "all jitter." Petitioner argued this corresponds to minimizing high-frequency motion components (angular velocity and acceleration). The Bell Paper also explicitly discloses keeping the "crop window inside the input frame," thereby respecting a crop constraint.
  • Motivation to Combine: A POSITA would have been highly motivated to combine the Bell patent with the Bell Paper. The Bell Paper provides the detailed mathematical foundation for the smoothing method described more generally in the Bell patent. A skilled artisan seeking to implement or improve the system in Bell would naturally turn to this related, more detailed publication from the same inventors.
  • Expectation of Success: The combination would have a high expectation of success given that the references originate from the same authors, are directed to the same subject matter, and are complementary.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Sokeila (for a circular buffer per claim 12), Kwatra (for a weight-balance parameter per claim 13), and Corey (for a stickiness parameter per claim 15).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is inappropriate because the parallel litigation is a U.S. International Trade Commission (ITC) proceeding, to which the Fintiv factors do not apply according to USPTO guidance.
• Petitioner also contended that denial under 35 U.S.C. §325(d) is unwarranted. It was argued that five of the seven key prior art references were never cited during prosecution. For the two references that were cited (Karpenko and Kwatra), Petitioner asserted that the Examiner never substantively applied them against the claims, and thus the petition presents the art in a new light.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of Patent 10,958,840 as unpatentable.