PTAB

IPR2024-01422

Aputure Imaging Industries Co Ltd v. Rotolight Ltd

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Controlling a Lighting Device with Customizable Effects
  • Brief Description: The ’044 patent discloses a method, system, and computer program for controlling a lighting device to produce user-customizable lighting effects. The claimed invention involves receiving a user input simulation parameter, storing it in memory, recalling the parameter, calculating a time-varying lighting value using an "effect simulator," and outputting that value to the lighting device.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 6-19 are obvious over Mueller, and Claims 5 and 6 are obvious over Mueller in view of Edwards.

  • Prior Art Relied Upon: Mueller (Application # 2005/0275626) and Edwards (Patent 9,743,010).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mueller, which discloses an “Entertainment Lighting System,” teaches every key limitation of the independent claims. Mueller’s system uses a processor (the claimed "effect simulator") that receives user signals from an interface to control light sources and generate dynamic, multi-color lighting effects. Mueller described that a user can select pre-programmed effects, change various parameters, and store these settings in memory. The processor then calculates and outputs control signals based on these recalled parameters to generate the selected effect. Petitioner asserted this maps directly to the method, system, and computer program of independent claims 1, 12, and 19. For dependent claims, Petitioner pointed to Mueller's disclosures of storing parameters locally within a lighting unit (claim 2), using color and brightness as simulation parameters (claims 3, 4, 8), generating specific effects like explosions and flashes (claim 7), and its intended use in film and video studios (claims 10, 16, 18).
    • Motivation to Combine (for Claims 5 & 6): Petitioner contended that Mueller’s system, while comprehensive, does not explicitly address compensating for camera-specific artifacts like flicker. Edwards taught a system for synchronizing LED lights with a digital camera’s shutter and frame rate to prevent such artifacts. Because both Mueller and Edwards operate in the same field of entertainment and film lighting, a person of ordinary skill in the art (POSITA) would be motivated to combine Edwards's known solution for a common problem (flicker) with Mueller's versatile lighting control system to improve its performance in professional videography settings.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as it involved applying a known technique for preventing flicker to a compatible and conventional entertainment lighting system.

Ground 2: Claims 1-19 are anticipated or rendered obvious by Astera.

  • Prior Art Relied Upon: Astera (a user manual for the Astera AX10 Spotmax lighting fixture).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Astera user manual, which was publicly available before the ’044 patent's priority date, discloses a lighting product that performs every step of the challenged claims. The Astera AX10 light is a controllable device used for studio filming that can be operated via an on-device Control Panel or a mobile application ("AsteraApp"). Users can receive input by selecting predefined effects (e.g., fire, strobe, rainbow), customize simulation parameters (e.g., speed, color, brightness), and save the customized effects to memory. The AX10’s internal “standalone engine” or the AsteraApp functions as an effect simulator, calculating time-varying lighting values based on the recalled parameters and outputting them to the LEDs to simulate the desired effect. This, Petitioner asserted, anticipates independent claims 1, 12, and 19.
    • Prior Art Mapping (Dependent Claims): Petitioner further argued that Astera discloses the limitations of the dependent claims. The AX10 stores parameters locally in "Standalone" mode (claim 2); uses color, color temperature, speed, and brightness as parameters (claims 3, 4, 8); provides a "stroboscope" effect with adjustable speed (claim 5); includes an "Anti-Flicker" setting that uses the camera's frame rate as an input parameter (claim 6); and offers effects like "fire" and "strobe" that mimic claimed effects (claim 7).

4. Arguments Regarding Discretionary Denial

  • General Plastic Factors: Petitioner argued that denial is unwarranted because it is a first-time challenger of the ’044 patent and has no significant relationship with any previous petitioner. Petitioner asserted this factor is dispositive and outweighs other considerations.
  • Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, stating that the co-pending district court litigation is in its earliest stages. Key factors weighing against denial included that no trial date is scheduled, investment in the litigation has been minimal, and no invalidity contentions are due. Petitioner contended that the IPR would resolve the patentability issues more efficiently and would likely reach a final written decision well before any potential trial.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-19 of the ’044 patent as unpatentable.