PTAB

IPR2025-01314

Samsung Electronics Co Ltd v. Maxell Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Digital Recorder Capable of Creating a Playlist
  • Brief Description: The ’198 patent relates to a digital image recording and reproducing apparatus, such as a digital recorder for TV broadcasts, capable of creating a playlist. The technology allows a user to select a digital image, after which the apparatus retrieves other digital images sharing the same "related information" as candidates for addition to the playlist.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nagaoka - Claims 1-4, 6, 9-11 are obvious over Nagaoka.

  • Prior Art Relied Upon: Nagaoka (Patent 7,822,233).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nagaoka, which teaches a system for organizing digital photos using facial recognition, discloses every limitation of independent claims 1 and 6. Nagaoka’s system, comprising a "media organizing and processing unit" connectable to a display, was asserted to be the claimed "apparatus." Petitioner contended that Nagaoka's graphical user interface (GUI) serves as the "output module" by displaying a plurality of images alongside "related information" (e.g., categories like people, dates, events, and facial similarity data). The user's selection of an image to find similar faces was mapped to the claimed selection of an image to add to a playlist, with Nagaoka’s facial recognition software acting as the "control module" that retrieves candidate images based on shared related information (i.e., the same person's face).
    • Motivation to Combine: Although a single-reference ground, Petitioner argued a person of ordinary skill in the art (POSITA) would be motivated to combine the various embodiments within Nagaoka because they all serve the common purpose of organizing digital media using a computer-based system.
    • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success in implementing the claimed system using Nagaoka’s teachings, as it would require minimal modifications and yield the predictable result of an organized photo collection.

Ground 2: Obviousness over Nagaoka and Benyamin - Claims 5 and 12 are obvious over Nagaoka in view of Benyamin.

  • Prior Art Relied Upon: Nagaoka (Patent 7,822,233) and Benyamin (Patent 6,721,489).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground supplements the teachings of Nagaoka to address the limitations of claims 5 and 12, which require outputting a "telop" (a selection menu or overlay) for selecting images to add to a playlist. While Nagaoka provides the base system for image organization and playlist creation, Petitioner argued Benyamin explicitly discloses a playlist manager that provides a "window indicating to the user that the track meets the criteria for a play list and requests that the user confirm that the track should be added." This confirmation window was asserted to be the claimed "telop" or "selection menu."
    • Motivation to Combine: A POSITA would combine Benyamin’s user-friendly confirmation menu with Nagaoka’s image organization system to improve usability. Adding a confirmation step via a pop-up window or menu was a well-known and conventional technique in GUI design to prevent user error and confirm actions. This combination would predictably enhance Nagaoka's system without changing its fundamental operation.
    • Expectation of Success: Petitioner argued the combination was a simple integration of a known UI element into an existing system, which would have been straightforward for a POSITA with a high expectation of success.

Ground 3: Obviousness over Watanabe Combination - Claims 1-16 are obvious over Watanabe in view of Looney, Platt, and Kaplan.

  • Prior Art Relied Upon: Watanabe (Application # 2001/0026287), Looney (Patent 6,953,886), Platt (Patent 6,987,221), and Kaplan (Application # 2001/0056434).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presents an alternative invalidity theory for all claims based on a different set of references. Petitioner argued Watanabe discloses the core system: a device for managing digital content (including images) with a library display and a playlist editing screen where users can add content based on criteria like artist or album title. To meet other limitations, Looney was cited for teaching a "telop" window for media categorization. Platt was cited for teaching the generation of playlists by comparing media items to "seed items" based on similarity metrics, which Petitioner mapped to the claimed feature of retrieving other images with the same "related information." Finally, Kaplan was cited for teaching the use of thumbnails (reduced images) in a GUI, addressing the limitation in claim 4.
    • Motivation to Combine: A POSITA would combine these references as they all address the common field of digital media organization. It would have been obvious to enhance Watanabe’s basic playlist manager with Platt's more advanced, similarity-based content suggestion feature. Likewise, incorporating Looney’s selection menus and Kaplan’s use of thumbnails would have been seen as conventional design choices to improve the user interface and overall functionality.
    • Expectation of Success: The proposed combination involved integrating known, compatible features from the same technical field to achieve predictable improvements, giving a POSITA a reasonable expectation of success.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combining Nagaoka with Nara (for adding program title/time zone information and dubbing features) and with combinations of Nara, Benyamin, and Imada (for adding features related to bit rates and recording capacity), but relied on similar design modification theories.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of Patent 8,180,198 as unpatentable.