Samsung Electronics Co Ltd v. Optimum Imaging Technologies LLC

1. Case Identification

• Case #: IPR2025-00628
• Patent #: 8,451,339
• Filed: February 21, 2025
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Optimum Imaging Technologies LLC
• Challenged Claims: 6, 7, and 10

2. Patent Overview

• Title: Digital Imaging System for Correcting Image Aberrations
• Brief Description: The ’339 patent discloses a digital imaging system, such as a digital camera, that can identify and correct optical and digital image aberrations internally. The system uses an integrated circuit and a digital signal processor to apply filtration algorithms based on information stored in a database.

3. Grounds for Unpatentability

Ground 1: Obviousness over Niikawa and Steinberg - Claims 6, 7, and 10 are obvious over Niikawa in view of Steinberg.

• Prior Art Relied Upon: Niikawa (Application # 2002/0135688) and Steinberg (Application # 2005/0041121).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Niikawa disclosed a digital camera that corrects for "shading" aberrations using a general controller, memory, and a database (shading ROM with correction tables). While Niikawa’s camera included a flash, it did not teach how to correct the resulting "red-eye" aberration. Petitioner asserted that Steinberg remedied this deficiency by teaching a digital camera that specifically corrects red-eye. Steinberg’s method involved using a digital signal processor (DSP) to compare a captured image with a reference image (e.g., a pre-flash preview image) to identify and correct red-eye artifacts by modifying pixel values.
  • Petitioner contended that the combination of these references taught all limitations of independent claim 6. Specifically, a POSITA would have integrated Steinberg’s red-eye correction system into Niikawa’s camera architecture. This would result in a system where software (Steinberg’s red-eye algorithm stored in Niikawa’s ROM 151) and an integrated circuit (Niikawa’s general controller 150) are used to identify an aberration (red-eye) by comparing image files stored in a database. The system would then send the filtration algorithm from the integrated circuit to a DSP (as taught by Steinberg) to correct the aberration. Dependent claim 7 was met because red-eye is a listed optical aberration, and claim 10 was met because Steinberg’s pixel modification constitutes applying color filtration.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) reviewing Niikawa’s camera design would recognize that its flash could cause the well-known problem of red-eye, which Niikawa did not address. Seeking to improve image quality, the POSITA would have been motivated to find a solution. Steinberg provided an effective in-camera solution for red-eye removal that did not require an objectionable pre-flash. A POSITA would combine Steinberg’s red-eye filtration technique with Niikawa’s camera to provide a more comprehensive aberration correction system and produce higher-quality images.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. Both Niikawa and Steinberg utilized conventional and ubiquitous digital camera hardware components (e.g., sensors, integrated circuits, DSPs, memory) that were well understood by the ’339 patent’s 2006 priority date. Implementing Steinberg’s known red-eye algorithm within Niikawa’s disclosed hardware architecture would involve routine software and hardware integration, yielding the predictable result of a camera capable of correcting both shading and red-eye.

4. Key Claim Construction Positions

• "sent from the integrated circuit to the digital signal processor" (Claim 6): Petitioner based its challenge on an implicit construction advanced by the Patent Owner in co-pending litigation. This construction allows for the "integrated circuit" and the "digital signal processor" to be part of the same physical chip, such as a System-on-a-Chip (SoC). Under this interpretation, the "sending" of a filtration algorithm can occur between two different functional blocks within a single integrated circuit (e.g., from a ROM area to a DSP core on the same chip). This construction is critical to Petitioner's argument that implementing Steinberg’s DSP within Niikawa’s "general controller" integrated circuit would meet the claim limitation.
• "and/or" (Claim 7): For the purposes of the petition, Petitioner interpreted the phrase "wherein the optical aberrations include ... dust and/or flare types of optical aberrations" as requiring the presence of any one or more of the listed aberrations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was unwarranted because the primary references, Niikawa and Steinberg, were never considered during the original prosecution.
• To moot discretionary denial under Fintiv, Petitioner provided a Sotera stipulation, agreeing not to pursue in district court any invalidity ground that was raised or reasonably could have been raised in the inter partes review (IPR) if the petition is instituted.
• Petitioner also argued against denial under General Plastic, asserting that this petition challenges claims (6, 7, 10) not challenged in any prior IPRs against the ’339 patent. Petitioner contended this inaugural challenge to these specific claims weighed heavily in favor of institution, and other factors were either neutral or favorable.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 6, 7, and 10 of Patent 8,451,339 as unpatentable.