PTAB

IPR2025-01314

Samsung Electronics Co. Ltd. v. Maxell Corporation

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1. Case Identification

2. Patent Overview

  • Title: Digital Image Recording and Reproducing Apparatus and Method for Creating Playlist
  • Brief Description: The ’198 patent relates to digital recorders, such as those using an HDD or DVD, capable of recording digital images from sources like TV broadcasts. The technology focuses on creating a "playlist" by allowing a user to select a recorded image and then automatically identifying and presenting other images with the same related information as candidates for inclusion.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nagaoka - Claims 1-4, 6, and 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 all limitations of the challenged claims. Nagaoka’s "media organizing and processing unit" connectable to a display was asserted to be the claimed apparatus. Its GUI displays a plurality of images alongside related information (e.g., categories for "dates," "events," "people"). Petitioner contended this organization of images into folders based on shared characteristics, such as containing the same person identified via facial recognition, constitutes the claimed "playlist." The system’s ability to find and group photos based on a user-selected criterion (like a person's face) was argued to meet the limitation of retrieving other images with the same related information to serve as candidates for the playlist.
    • Motivation to Combine (for §103 grounds): The argument was based on combining different disclosed embodiments and features within Nagaoka itself. Petitioner asserted a person of ordinary skill in the art (POSITA) would be motivated to use Nagaoka's various organizational tools (e.g., sorting by date, event, or recognized faces) together, as they all serve the patent's stated purpose of organizing digital media.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success, as combining Nagaoka's inherent features would yield the predictable result of an organized photo collection.

Ground 2: Obviousness over Nagaoka in view of 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 builds on Nagaoka to address the "telop" (i.e., a selection menu or pop-up window) limitation recited in claims 5 and 12. Petitioner argued Nagaoka discloses the base system for selecting an image and finding related candidate images. Benyamin, which relates to a playlist manager, was cited for its disclosure of a system that provides a window or menu to the user, requesting confirmation to add a track to a playlist. Petitioner argued this teaching from Benyamin supplies the claimed "telop" or "selection menu" functionality.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Benyamin’s well-known UI feature of a confirmation window with Nagaoka’s media organization system to enhance usability. Providing a menu for users to confirm selections was a common and logical design choice for improving user interaction in media management software.
    • Expectation of Success (for §103 grounds): Adding a standard UI element like a selection menu to an existing system was a simple modification that would predictably result in a more user-friendly interface.

Ground 6: Obviousness over Watanabe, Looney, Platt, and Kaplan - 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 presented an alternative invalidity theory using a different set of references. Petitioner argued Watanabe discloses the core digital recording apparatus with a "play list edit mode" that displays digital content and related metadata (e.g., artist, album title, genre). Looney was introduced for its disclosure of a "telop window" for media organization and editing metadata. Platt was cited for its method of generating playlists by comparing media items to "seed items" based on similarity metrics. Finally, Kaplan was cited for teaching the use of thumbnails as small image representations in a user interface.
    • Motivation to Combine (for §103 grounds): A POSITA would combine these references to create a comprehensive media management system. They would start with Watanabe's base system and incorporate Looney’s more advanced UI and editing features (the telop), Platt's sophisticated method for suggesting content based on similarity, and Kaplan's use of thumbnails for a more efficient visual display. The motivation was to improve the user experience by integrating known, advantageous features from the art.
    • Expectation of Success (for §103 grounds): Combining these complementary features from analogous art would have been a straightforward design process with a high expectation of success, leading to a predictably enhanced media organizer.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Nagaoka in view of combinations including Nara (Patent 8,024,757), Benyamin, and Imada (Application # 2003/0099460). These grounds relied on similar combination rationales to add teachings for specific features like using program titles and time zones as related information (from Nara), creating a "dubbing list" (from Nara), and determining bit rates for recording (from Imada).

4. Relief Requested

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