PTAB

IPR2024-01434

Arashi Vision v. GoPro Inc

Title: Camera
Brief Description: The ’435 patent claims the ornamental design for a camera featuring a rectangular, "box-like" body with flat faces, a rectangular lens cover, and rectangular elements for displays and buttons.

Prior Art Relied Upon: Publications disclosing the GoPro Hero4 camera ("Hero4"), Chinese Design Pub. No. 303440022 ("Huang"), and Korean Design Pub. No. 300792432 ("Heo").
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Hero4, a camera in a transparent housing, is a primary reference that is highly visually similar to the ’435 patent design. Both designs allegedly share an overall rectangular, box-like impression, including a rectangular body with flat faces, a protruding rectangular lens cover, a front display, and a large rear display. Petitioner contended that minor differences, such as the height of the top button protrusion, are insignificant.
- Motivation to Combine (for §103 grounds): The petition asserted that Hero4 has circular buttons, whereas the ’435 patent has rectangular buttons. A person of ordinary skill in the art (POSITA) would combine Hero4 with the teachings of Huang or Heo, which disclose rectangular buttons on the top and sides of a camera. The motivation was to create a more consistent and unified rectangular design aesthetic, which was a known design trend.
- Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in modifying the button shapes on Hero4, as changing button geometry is a routine and predictable design modification.

Prior Art Relied Upon: Patent D710,921 ("Gioscia"), Huang, and Heo.
Core Argument for this Ground:
- Prior Art Mapping: Petitioner identified Gioscia, which discloses a "camera housing," as a primary reference that is visually similar to the ’435 patent. Gioscia allegedly shows a rectangular body with flat faces, a top button protrusion, a rectangular lens cover, and a front display, creating a similar overall impression. Petitioner argued that minor differences in the proportions of these features are insignificant.
- Motivation to Combine (for §103 grounds): Gioscia features circular button/access elements on its top and sides. As in Ground 1, Petitioner argued a POSITA would be motivated to modify Gioscia by replacing these circular elements with the rectangular buttons taught by Huang and Heo. This modification would enhance the overall rectangular design theme, creating a more cohesive visual appearance consistent with market trends.
- Expectation of Success (for §103 grounds): The modification was presented as a simple substitution of one known button shape for another, with a high expectation of success.

Prior Art Relied Upon: Patent D750,680 ("Chen680"), Huang, Heo, Chinese Design Pub. No. 303358967 ("Li"), and Patent 9,864,258 ("McVicker").
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Chen680, a "camera housing" design, serves as a primary reference. Chen680 allegedly discloses a rectangular body, a top button protrusion, a rectangular lens cover, and a large rear display, but lacks a front display and has circular top buttons.
- Motivation to Combine (for §103 grounds): A POSITA would combine Chen680 with Huang, Li, or McVicker to add a small, rectangular front display. The motivation was to provide useful information to a user viewing the camera from the front. Further, a POSITA would combine Chen680 with Huang or Heo to modify the circular top buttons to be rectangular, again to achieve a consistent design language.
- Expectation of Success (for §103 grounds): Combining these known features—adding a standard front display and altering button shapes—was argued to be a predictable design choice with a high expectation of success.
Additional Grounds: Petitioner asserted additional obviousness challenges based on Wang (Chinese Design Pub. No. 204360078), Chen686 (Patent D750,686), and Woodman (Patent D702,747) as primary references, combined with Huang, Heo, Li, and McVicker. These grounds relied on similar design modification theories to achieve a cohesive rectangular aesthetic.

Petitioner argued that the single claim of the ’435 patent, defined by its drawings, should be interpreted to encompass the overall visual impression of a rectangular design for a camera.
This interpretation includes a rectangular body with flat faces, a rectangular lens cover extending from the body, rectangular button/access elements, and rectangular displays.
Petitioner noted it interprets the claim based on the breadth of Patent Owner's infringement allegations in a related International Trade Commission (ITC) proceeding.

Petitioner contended that designs for a "camera" and a "camera housing" are analogous arts.
The argument was that a POSITA designing a camera would look to the designs of camera housings because they share similar outer appearances, design elements (bodies, buttons, lens covers), and functional considerations (e.g., being compact and lightweight).
This contention underpins the use of camera housing designs (Gioscia, Chen680, etc.) as primary references against the claimed camera design.

Denial under Fintiv: Petitioner argued the Board should not deny institution under Fintiv because the co-pending litigation is an ITC proceeding, not a district court case. The petition asserted that the Fintiv factors are directed at district court litigation and do not apply to ITC proceedings, as the ITC cannot invalidate a patent.
Denial under §325(d): Petitioner argued against denial under §325(d), stating that the petition does not raise substantially the same art or arguments presented during prosecution. While two references (Chen680 and Chen686) were listed in an IDS, they were never substantively discussed or applied by the Examiner. Furthermore, Petitioner argued that the legal standard for design patent obviousness has materially changed since prosecution, following the Federal Circuit's decision in LKQ Corp. v. GM, making the original examination less relevant.

Petitioner requested institution of an inter partes review and cancellation of the single claim of Patent D789,435 as unpatentable under 35 U.S.C. §103.