PTAB

IPR2025-00518

LG Electronics Inc v. Maxell Ltd

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: RECORDING MEDIUM
  • Brief Description: The ’760 patent describes a digital camera that records still images using two different recording methods and also records thumbnail images for use when searching images on a display device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Linzer-Hirai - Claims 1-9 are obvious over Linzer in view of Hirai.

  • Prior Art Relied Upon: Linzer (Patent 6,005,621) and Hirai (Application Pub. No. 2002/0131760).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Linzer and Hirai taught every limitation of the challenged claims. Linzer was asserted to disclose a system for non-linear video editing that generates two versions of a video stream from a common source: a high-quality version (e.g., MPEG-2) and a low-quality version (e.g., Motion JPEG or M-JPEG). The MPEG-2 stream provides the claimed "first still picture" (as an I-frame), and the M-JPEG stream provides the "second still picture" (as a JPEG frame). Hirai was asserted to disclose a non-linear video editor that generates reduced-pixel "M-icons" (thumbnails) from video data to facilitate editing. Petitioner contended that generating an M-icon from Linzer's M-JPEG stream, as taught by Hirai, provides the claimed third, smaller "picture." All three pictures were argued to be derived from the common video source disclosed in Linzer.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references because they address complementary aspects of non-linear video editing. While Linzer taught the creation of multiple resolution video streams to improve editing efficiency, it was silent on the specific implementation of the editor's user interface. A POSITA would naturally look to references like Hirai to implement known interface features, such as thumbnail-based editing, into Linzer’s system.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the references involved applying Hirai's known user interface techniques to Linzer's known dual-stream system to achieve the predictable result of a more efficient and user-friendly non-linear editor.

Ground 2: Obviousness over Lathrop and Wang - Claims 1, 3, 4, 6-7, and 9 are obvious over Lathrop, alone or in view of Wang.

  • Prior Art Relied Upon: Lathrop (Patent 6,288,743) and Wang (Patent 6,028,603).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Lathrop, by itself, rendered apparatus claims 1 and 3 obvious. Lathrop allegedly disclosed a digital camera that captures and stores on a recording medium: (1) a processed, "finished" JPEG image (the first still picture); (2) a "raw" Bayer pattern TIFF image (the second still picture using a different encoding method); and (3) a "reduced resolution thumbnail image" (the third, smaller picture). All three were described as originating from the camera's common image sensor data. For the method claims (4, 6-7, 9), Petitioner combined Lathrop with Wang. Wang was asserted to disclose album authoring software that reproduces and displays multiple images, including thumbnails, from a storage device, allowing a user to select and organize them into an album.
    • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would combine Lathrop’s image capture system with Wang’s image management software to provide a necessary function that Lathrop lacked: a way for users to effectively view, organize, and interact with the multiple distinct image files created by the camera once transferred to a computer.
    • Expectation of Success (for §103 grounds): There was a high expectation of success, as applying Wang's standard image organization and display methods to the image files generated by Lathrop's camera was a routine combination that would predictably result in a functional end-to-end image capture and management system.

Ground 3: Obviousness over Anderson - Claims 4, 6-7, and 9 are obvious over Anderson.

  • Prior Art Relied Upon: Anderson (International Publication No. WO 1998/057294).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Anderson, a single reference, rendered the challenged method claims obvious. Anderson was said to teach an imaging device that stores a single image file containing three related versions of an image, all derived from common raw sensor data: (1) a medium-resolution "screennail" image (the first still picture); (2) a full-sized, compressed JPEG image (the second still picture with different encoding); and (3) a low-resolution "thumbnail" image (the third picture with a smaller pixel count). Anderson further disclosed methods of reproducing these images, such as fetching and displaying multiple thumbnails on a review screen (outputting a plurality of pictures) and then fetching and displaying the corresponding screennail for a selected image (outputting the first still picture corresponding to the selected picture).

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1, 3-4, 6-7, and 9 based on Suzuki (Patent 5,724,579), which teaches creating a JPEG "main image" and multiple, smaller "subordinate images" in different formats (e.g., TIFF, BMP) derived from it.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be improper under multiple frameworks. Under the General Plastic factors, Petitioner asserted it is not a repeat petitioner, has no significant relationship to the petitioner in a prior IPR on the ’760 patent, and that the asserted prior art is new to the Board. Under §325(d) (Advanced Bionics), Petitioner argued the asserted references were not considered during prosecution, and to the extent any reference is cumulative, the examiner made a clear material error in allowing the claims. Finally, Petitioner argued against discretionary denial under Fintiv, contending that the parallel district court litigation is in its early stages, with a trial date projected for nearly 1.5 years after the Board's Final Written Decision would be due, and that the compelling merits of the petition favor institution to promote patent quality.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’760 patent as unpatentable.