Aputure Imaging Industries Co Ltd v. Rotolight Ltd

1. Case Identification

• Case #: IPR2024-01424
• Patent #: 10,197,257
• Filed: September 16, 2024
• Petitioner(s): Aputure Imaging Industries Co., Ltd.
• Patent Owner(s): Rotolight Limited
• Challenged Claims: 1-21

2. Patent Overview

• Title: Method and Controller for Providing a User Customisable Lighting Effect
• Brief Description: The ’257 patent describes methods, controllers, and computer programs for producing user-customizable lighting effects for applications such as videography and studio filming. The system calculates a "time varying lighting value" based on simulation parameters, at least one of which must relate to a random brightness, duration, or interval, to generate a selected lighting effect.

3. Grounds for Unpatentability

Ground 1: Anticipation or Obviousness over Pohlert - Claims 1-21 are anticipated by or obvious over [Pohlert](https://ai-lab.exparte.com/case/ptab/IPR2024-01424/doc/1011) under 35 U.S.C. §§ 102/103.

• Prior Art Relied Upon: Pohlert (Application # 2012/0044374).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Pohlert discloses every limitation of the challenged claims. Pohlert describes a "lighting and effects generation system" for photography and film that uses a dedicated "power controller" to generate user-customizable lighting effects. This controller functions as the claimed "effect simulator" by calculating time-varying lighting values (power control signals) based on user-selected simulation parameters (e.g., brightness, frequency, color). Critically, Pohlert teaches generating lighting patterns based on "pseudo-random" sequences of strobing and flashing LEDs. Petitioner asserted that such a pseudo-random sequence inherently involves random brightness (intensity depending on which LEDs are active), random duration (how long a flash lasts), and random intervals (time between flashes), thus meeting the core limitation of independent claims 1, 15, and 20.
  • Motivation to Combine (for §103 grounds): As an alternative to anticipation, Petitioner argued it would have been obvious to a person of ordinary skill in the art (POSITA) that Pohlert’s disclosed pseudo-random sequences of flashes and strobes would result in random brightness, duration, and intervals. A POSITA would have recognized this as a simple and inherent result of implementing the disclosed system.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as implementing Pohlert's disclosed pseudo-random control over LEDs would predictably result in the claimed random lighting characteristics.

Ground 2: Obviousness over Mueller and Reichow - Claims 1-21 are obvious over [Mueller](https://ai-lab.exparte.com/case/ptab/IPR2024-01424/doc/1004) in view of [Reichow](https://ai-lab.exparte.com/case/ptab/IPR2024-01424/doc/1010) under §103.

• Prior Art Relied Upon: Mueller (Application # 2005/0275626) and Reichow (Patent 7,686,471).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Mueller discloses a general framework for an entertainment lighting system that meets most claim limitations but lacks specific details on implementing random effects. Mueller teaches a processor-controlled lighting unit for film and video studios where users can select pre-programmed effects. This processor acts as the "effect simulator" to generate time-varying lighting signals. To supply the missing element of randomness, Petitioner pointed to Reichow, which details a "Standalone Flame Simulator." Reichow explicitly teaches using a controller to run a flame simulation routine that determines "random timing or random brightness levels" to create a realistic flickering effect. The combination of Mueller's customizable lighting system with Reichow's specific method for generating random brightness and timing renders the claims obvious.
  • Motivation to Combine (for §103 grounds): A POSITA, seeking to implement one of the many effects listed in Mueller (such as a fire or explosion effect), would be motivated to consult other art to find specific algorithms for creating realistic simulations. Reichow, which is directed to simulating a flame using random light flickering, directly addresses this need. A POSITA would combine Reichow’s specific randomizing technique with Mueller's broader, programmable system to create more realistic and varied lighting effects.
  • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success in this combination, as it would have involved implementing Reichow's known flame simulation software routines on Mueller's disclosed programmable processor, a conventional and predictable task in the field of lighting control.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is not warranted because the prior art combinations asserted in the petition were not considered during prosecution and the petition is supported by a new expert declaration.
• Petitioner further argued against denial under the General Plastic factors, stating that because it has not previously filed a petition against the ’257 patent and has no significant relationship with any prior petitioner, this factor is dispositive and weighs heavily against denial.
• Regarding discretionary denial under Fintiv, Petitioner asserted the factors weigh against denial because the parallel district court litigation is in its early stages with no trial date set, investment in the litigation has been minimal, and the merits of the petition are strong. Petitioner also noted it would decline to assert the same prior art combinations in litigation if a trial is instituted, thereby avoiding significant overlap.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-21 of the ’257 patent as unpatentable.