Arashi Vision Inc v. GoPro Inc

1. Case Identification

• Case #: IPR2024-01434
• Patent #: D789,435
• Filed: September 26, 2024
• Petitioner(s): Arashi Vision (U.S.) LLC (d/b/a Insta360)
• Patent Owner(s): GoPro, Inc.
• Challenged Claims: 1

2. Patent Overview

• Title: Ornamental Design for a Camera
• Brief Description: The ’435 patent claims the ornamental design for a camera characterized by a collection of rectangular, “box-like” features. The design includes a rectangular body with flat faces, a rectangular lens cover, rectangular displays, and rectangular buttons or access elements.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hero4 and Huang/Heo - The single claim is obvious over Hero4 in view of Huang and/or Heo.

• Prior Art Relied Upon: Hero4 (a collection of 2014 publications depicting the GoPro Hero4 camera), Huang (Chinese Design Publication No. 303440022), and Heo (Korean Design Publication No. 300792432).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Hero4 camera is a visually similar primary reference that creates the same overall "box-like" impression as the ’435 patent. Hero4 discloses a rectangular body with flat faces, a rectangular lens cover, a front display, a large rear display, and a top button protrusion. The primary visual difference is that Hero4 features circular buttons, whereas the ’435 patent claims rectangular buttons.
  • Motivation to Combine: A designer of ordinary skill would combine Hero4 with the teachings of Huang or Heo. Both Huang and Heo disclose cameras with rectangular buttons. The motivation would be to create a more harmonious and consistent rectangular design aesthetic by modifying Hero4’s circular buttons to be rectangular, aligning them with the camera’s overall rectangular body, lens cover, and displays.
  • Expectation of Success: Modifying the shape of buttons from circular to rectangular was a simple, well-known, and predictable design modification with a high expectation of success.

Ground 2: Obviousness over Gioscia and Huang/Heo - The single claim is obvious over Gioscia in view of Huang and/or Heo.

• Prior Art Relied Upon: Gioscia (Patent D710,921), Huang, and Heo.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Gioscia, which discloses a “camera housing,” is a visually similar primary reference. Gioscia shows a rectangular body, flat faces, a top button protrusion, and a rectangular lens cover. However, Gioscia’s side and top buttons are circular, and it lacks the large rectangular rear display of the claimed design.
  • Motivation to Combine: A designer would be motivated to modify Gioscia’s circular buttons to be rectangular, as taught by Huang and Heo, to achieve a more consistent rectangular visual impression. Furthermore, a designer would add a large rear display, as taught by Heo, for the known functional purpose of allowing a photographer to view the captured image, a common feature in the field.
  • Expectation of Success: Combining these known features—rectangular buttons for aesthetic consistency and a rear display for functionality—involved predictable design choices.

Ground 3: Obviousness over Chen680 and Secondary References - The single claim is obvious over Chen680 in view of Huang, Heo, Li, and/or McVicker.

• Prior Art Relied Upon: Chen680 (Patent D750,680), Huang, Heo, Li (Chinese Design Publication No. 303358967), and McVicker (Patent 9,864,258).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that the Chen680 camera housing is a visually similar primary reference, sharing the rectangular body, flat faces, top button protrusion, and large rear display. Key differences are Chen680’s lack of a small rectangular front display and its use of circular top buttons.
  • Motivation to Combine: A designer would be motivated to add a small front display, as taught by Huang, Li, or McVicker, to provide useful information to the photographer from the front. The designer would also be motivated to change Chen680’s circular buttons to rectangular ones, as taught by Huang and Heo, to enhance the overall rectangular design theme.
  • Expectation of Success: These modifications represented the application of known design options (front displays, rectangular buttons) to improve functionality and aesthetic consistency.

• Additional Grounds: Petitioner asserted additional obviousness challenges over primary references Wang (Chinese Publication No. 204360078), Chen686 (Patent D750,686), and Woodman (Patent D702,747), each in combination with various secondary references including Huang, Heo, Li, and McVicker. These grounds relied on similar theories of modifying a visually similar camera or camera housing to incorporate known rectangular features for aesthetic consistency and known functional elements like displays.

4. Key Claim Construction Positions

• Petitioner contended that the single claim of the ’435 design patent is defined by the solid lines in the drawings. The scope encompasses the overall visual impression of a rectangular design for a camera, which includes a rectangular body with flat faces, a rectangular lens cover, rectangular buttons/access elements, and rectangular displays. This interpretation focuses on the holistic "box-like" appearance rather than minute details.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention was that designs for "camera housings" (like Gioscia, Chen680, and Woodman) are analogous art to designs for "cameras." Petitioner argued that an ordinary designer would look to both for inspiration because they share the same function of protecting internal components, have similar design considerations (e.g., being compact and lightweight), and often share the same patent classifications. This position is critical to grounds relying on camera housing references.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is inappropriate because the parallel litigation is an International Trade Commission (ITC) proceeding, not a district court case. Petitioner asserted that ITC proceedings do not fall under the Fintiv factors as the ITC cannot invalidate a patent.
• Petitioner also argued against denial under §325(d), stating that the prior art was not substantively examined or applied during prosecution. Further, it contended that the legal standard for design patent obviousness has materially changed since prosecution due to the LKQ Corp. v. GM decision, making the original examination insufficient.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of the single claim of the ’435 patent as unpatentable.