TCL Industries Holdings Co Ltd v. Maxell Ltd

1. Case Identification

• Case #: IPR2025-00134
• Patent #: 10,650,780
• Filed: November 4, 2024
• Petitioner(s): TCL Electronics Holdings Ltd.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1-11, 13, and 15-20

2. Patent Overview

• Title: Display apparatus
• Brief Description: The ’780 patent discloses an image display apparatus, such as a television, that connects to an external portable image device, such as a digital camera, via both a wired Universal Serial Bus (USB) port and a wireless local area network (LAN). The system receives picture information over these connections and displays the pictures as a slide show.

3. Grounds for Unpatentability

Ground 1: Claims 1-11, 13, and 15-20 are obvious over Lawther.

• Prior Art Relied Upon: Lawther (Application # 2008/0165081).
• Core Argument for this Ground: Petitioner argued that Lawther, which was not considered during the prosecution of the ’780 patent, discloses or renders obvious every element of the challenged claims. Lawther teaches a digital media frame (an image display apparatus) that receives digital images from external devices, including digital cameras, through both wired (e.g., USB) and wireless (e.g., LAN) connections. The core of Petitioner’s argument is that Lawther teaches all structural and functional aspects of the claimed invention, and any minor gaps, such as the explicit use of a specific compression format, would have been obvious additions based on the knowledge of a person of ordinary skill in the art (POSITA) at the time.
  • Prior Art Mapping:
    • Petitioner asserted that Lawther discloses the core limitations of independent claims 1, 15, and 20. Lawther’s digital media frame (DMF) is an image display apparatus with an interface circuit for receiving data from external devices like a digital camera via both a wired "cable connector" (USB) and a wireless "internet connector" (LAN).
    • Lawther’s "processing circuit" is configured to perform "image decoding," which Petitioner mapped to the claimed "decoder." This circuit processes received image data for display on a screen.
    • Lawther explicitly teaches displaying images in a sequence or slide show and describes "determining time intervals for presenting the visual content," which can be altered by user input (e.g., a "pause signal from the user-input unit"), mapping to the slide show limitations.
    • For the limitation of receiving "compressed" image information, Petitioner argued that while Lawther may not explicitly use this term, it was well known that digital cameras used compression (like JPEG) to store and transmit images. A POSITA would have understood Lawther’s system, which is designed to receive various digital data formats, would inherently need to handle compressed images.
    • For dependent claims, Petitioner argued Lawther discloses a resizing processor ("image size scaling"), a remote controller (a "separable" user input system), and operation as a television display apparatus.
  • Motivation to Combine (with POSITA Knowledge): Petitioner argued a POSITA would be motivated to apply standard image compression techniques, such as JPEG, to the system disclosed in Lawther. The motivation would be to improve the device by enabling it to handle the most common image formats used by digital cameras and to achieve more efficient data transfer. This was presented as a simple application of a known technique to an existing system to yield predictable results.
  • Expectation of Success: Petitioner contended that a POSITA would have had a reasonable expectation of success in implementing a standard decoder (e.g., for JPEG) into Lawther’s system. Lawther’s processing circuit was already described as performing image decoding and handling various data formats, making the integration of a common, well-documented standard like JPEG a straightforward and predictable modification.

4. Key Claim Construction Positions

• Petitioner argued that for the purposes of the inter partes review (IPR), no terms required express construction and that all claim terms should be given their plain and ordinary meaning.
• Petitioner noted that while certain terms were construed in a parallel district court proceeding, the proposed plain-and-ordinary-meaning approach was sufficient to encompass its prior-art mappings for the IPR.

5. Arguments Regarding Discretionary Denial

• Petitioner made a Sotera stipulation, agreeing that if the IPR is instituted, it will not pursue in the parallel district court litigation the same grounds raised in the petition or any grounds that could have reasonably been raised.
• Based on this stipulation, Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) based on the Fintiv factors, in accordance with current PTAB guidance.

6. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-11, 13, and 15-20 of the ’780 patent as unpatentable.