PTAB

IPR2025-00519

LG Electronics Inc v. Maxell Ltd

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: INFORMATION EDITION DEVICE, INFORMATION EDITION METHOD, INFORMATION EDITION PROGRAM, AND INFORMATION RECORDING MEDIUM
  • Brief Description: The ’188 patent relates to an information editing apparatus that prevents accidental changes to thumbnail images. The apparatus uses "change permission information" to decide if a thumbnail can be changed, prohibits the change if not permitted, and can generate a warning signal.

3. Grounds for Unpatentability

Ground 1: Obviousness over Yoshida and Terashita - Claims 1-9 are obvious over Yoshida in view of Terashita.

  • Prior Art Relied Upon: Yoshida (Japanese Patent Publication No. JP2001211421A) and Terashita (Japanese Patent Publication No. JP2000307994A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Yoshida, a multimedia device for managing images, discloses most elements of the challenged claims. Yoshida teaches allowing users to select and change representative thumbnail images for video files and includes a feature to protect images from deletion. Petitioner contended that this protection status functions as the claimed "change permission information." If the Board finds Yoshida's protection feature insufficient, Petitioner asserted that Terashita supplies the missing element. Terashita discloses a system for managing audio-visual (AV) content that uses a specific data attribute to prevent accidental deletion, which serves as "change permission information." When deletion is prohibited, Terashita’s system displays a message, satisfying the "warning" limitation of dependent claim 2.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings to enhance Yoshida's user-controlled thumbnail system with Terashita's more robust safeguard mechanism. Incorporating Terashita's explicit deletion-prevention attribute would be a logical and desirable improvement to protect user-modified content and ensure data integrity, a common goal in multimedia content management.
    • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success, as combining a known content protection method (Terashita) with a known content editing system (Yoshida) uses predictable technologies to solve a known problem of accidental content modification.

Ground 2: Obviousness over Dow - Claims 1-9 are obvious over Dow.

  • Prior Art Relied Upon: Dow (Patent 6,292,273).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Dow, which discloses a portable hand-held image capture and communication device, renders all challenged claims obvious by itself. Dow’s processor, in conjunction with its application software, functions as the claimed "deciding device." It decides whether a change (e.g., deletion) is permitted based on the state of the system, such as whether a "delete button" is active. This system state, Petitioner argued, constitutes the "change permission information." When the delete function is inactive, the system prohibits the change and can invoke an "error utility software module" to notify the user, thereby generating the claimed "warning." Dow also describes user confirmation prompts for deletions, which represents another layer of deciding whether to permit a change.

Ground 3: Obviousness over Dow and Murakami - Claims 1-9 are obvious over Dow in view of Murakami.

  • Prior Art Relied Upon: Dow (Patent 6,292,273) and Murakami (Japanese Patent Publication No. JP2002033986A).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Dow provides the basic framework for an information editing apparatus. Murakami enhances Dow’s teachings by disclosing a more sophisticated erasure protection system for recorded programs. Murakami teaches prohibiting erasure based on "program recording reservation setting information" or if a program is currently being reproduced. Petitioner contended a POSITA would have understood this setting information to be a form of "change permission information" that could be integrated into Dow's decision-making process to create a more robust system for prohibiting changes.
    • Motivation to Combine: A POSITA would combine the references to enhance Dow’s relatively simple deletion functionality with Murakami’s more nuanced and flexible erasure protection features. This combination would allow users to selectively protect important images from deletion while still enabling efficient memory management, addressing a key concern in digital image management.
    • Expectation of Success: The integration would be straightforward, as both references operate in the field of digital content management and address the common need to protect stored data from unwanted modification.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claims 1-9 over Dow in view of Tezuka, Miyasaka in view of Murakami, and Miyasaka in view of Tezuka, relying on similar theories of combining a base image editing system with more specific content protection mechanisms.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv is inappropriate. It asserted that the merits of the petition are strong, and key Fintiv factors favor institution: the Board’s final written decision would issue approximately 1.5 years before the projected trial date in the parallel litigation; the litigation is in its early stages with no significant investment in claim construction or invalidity contentions; and the petition challenges claims that are not asserted in the district court case.
  • Petitioner also argued that denial under 35 U.S.C. §325(d) is improper. The grounds presented rely on new combinations of prior art that were not substantively considered by the examiner during prosecution. Petitioner specifically noted that while Miyasaka and Murakami were cited, the prosecution history is silent as to any substantive consideration of their teachings, and Tezuka was never before the Office at all, warranting a review on the merits.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’188 patent as unpatentable.