Samsung Electronics Co Ltd v. Optimum Imaging Technologies LLC

1. Case Identification

• Case #: IPR2024-00463
• Patent #: 10,877,266
• Filed: January 23, 2025
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Optimum Imaging Technologies LLC
• Challenged Claims: 1-30

2. Patent Overview

• Title: Digital Camera with Upgradable Image Correction
• Brief Description: The ’266 patent discloses methods for processing images within a digital camera using internal hardware and software. The system is configured to perform various image corrections, receive updated software and correction data, and wirelessly transmit corrected images to external devices.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sarbadhikari and Katagiri - Claims 1-2, 9-10, 20, and 22-23 are obvious over Sarbadhikari in view of Katagiri.

• Prior Art Relied Upon: Sarbadhikari (Patent 5,477,264) and Katagiri (Japanese Application # 2004-289225).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sarbadhikari teaches the core of the claimed invention: a digital camera with a programmable processor that performs image corrections using algorithms and data loaded from a removable memory card, effectively making the camera’s software and correction data upgradable. However, Sarbadhikari transfers images to external devices via the removable memory card. Katagiri, a surveillance camera reference, teaches performing various image corrections and then wirelessly transmitting the corrected images over a wireless LAN to an external device. The combination, therefore, discloses all limitations of independent claims 1 and 22, including in-camera processing, performing correction algorithms, using a database, upgrading the system with new data, storing corrected images, and wirelessly transmitting them.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Katagiri’s wireless transmission with Sarbadhikari’s upgradable camera to improve the functionality of Sarbadhikari. Specifically, adding wireless capability would make image transfer faster and more convenient than physically moving a memory card, which was a well-understood benefit and a predictable improvement.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in implementing this combination. Integrating a known wireless communication module (like Katagiri's) into a digital camera system (like Sarbadhikari's) involved conventional skills and would yield the predictable result of efficient wireless image transfer.

Ground 2: Obviousness over Sarbadhikari, Katagiri, and Iwasawa - Claims 2-10, 13-19, 24, 27, and 30 are obvious over Sarbadhikari and Katagiri in view of Iwasawa.

• Prior Art Relied Upon: Sarbadhikari (Patent 5,477,264), Katagiri (Japanese Application # 2004-289225), and Iwasawa (Japanese Application # 2000-41179).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the base combination of Sarbadhikari and Katagiri. Petitioner asserted that Iwasawa adds the teaching of performing shading correction based on specific user-adjustable variables, such as aperture value, zoom position, and lens type. Sarbadhikari already teaches user-adjustable settings (e.g., exposure time, ISO), and Iwasawa teaches linking specific correction data to these types of optical parameters. This combination addresses limitations in dependent claims related to processing corrections using user-adjustable variables (e.g., claims 2-7, 24), including aperture, lens data, shutter speed, and ISO settings. Iwasawa also discloses that corrections for a current image can be based on previously calculated and stored correction data, mapping to the "prior image corrections" limitation of claim 13.
  • Motivation to Combine: A POSA would have been motivated to incorporate Iwasawa’s teachings into the Sarbadhikari/Katagiri camera to improve image quality. Sarbadhikari’s camera, which uses adjustable lenses and settings, would have suffered from the same optical shading problems that Iwasawa was designed to solve. Adding Iwasawa’s shading correction capability was a known solution to a known problem.
  • Expectation of Success: A POSA would have had an expectation of success in this combination, as it would involve using Sarbadhikari's processor to execute Iwasawa's shading correction process and storing Iwasawa's correction data in Sarbadhikari's memory system, all using conventional digital imaging techniques.

Ground 3: Obviousness over Sarbadhikari, Katagiri, and Gindele - Claims 8, 13, and 27 are obvious over Sarbadhikari and Katagiri in view of Gindele.

• Prior Art Relied Upon: Sarbadhikari (Patent 5,477,264), Katagiri (Japanese Application # 2004-289225), and Gindele (Application # 2004/0066980).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground adds Gindele to the base combination of Sarbadhikari and Katagiri. Petitioner argued Gindele teaches performing user-adjustable "tonal range corrections" to enhance the dynamic range of an image. This directly maps to the limitation of claim 8. Gindele also discloses a system of "cascaded image processing modules" where a correction in one module (e.g., tone scale) is based on prior corrections in preceding modules (e.g., scene balance), which Petitioner mapped to the "prior image corrections" limitation of claims 13 and 27.
  • Motivation to Combine: Sarbadhikari teaches enhancing dynamic range, and Gindele teaches a specific method for "tonal range corrections" to achieve the same goal. A POSA would have been motivated to incorporate Gindele’s more specific techniques to further improve or enhance the dynamic range capabilities already present in Sarbadhikari.
  • Expectation of Success: Success was reasonably expected because it would involve using Sarbadhikari's existing processor and memory to execute Gindele’s tonal enhancement functions, a straightforward integration of known image processing techniques.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Sarbadhikari and Katagiri with Yamasaki (for claims related to depth-of-field adjustment), Ito (for claims requiring a fast Fourier transform), Miyazawa (for sensor dust correction), and Hamilton (for dead pixel correction). These grounds relied on similar theories of combining a base camera system with prior art teaching a specific, well-known image correction technique to achieve a predictable improvement.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial is unwarranted. Denial under General Plastic factors is inappropriate because this petition is a "copycat" of a previously filed inter partes review (IPR) and Petitioner intends to file for joinder, which mitigates concerns of serial challenges. Petitioner also argued that denial under Fintiv is inappropriate because it has made a Sotera stipulation, agreeing not to pursue the same invalidity grounds in the parallel district court litigation if the IPR is instituted. Finally, Petitioner contended that denial under §325(d) is inapplicable as no new art or arguments are raised beyond those in the IPR it seeks to join.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-30 of the ’266 patent as unpatentable.