Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 9
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` Entered: May 24, 2018
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-00233
`Patent 6,754,440 B2
`____________
`
`
`
`
`
`Before MINN CHUNG, TERRENCE W. McMILLIN, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`

`

`IPR2018-00233
`Patent 6,754,440 B2
`
`
`I. INTRODUCTION
`
`Huawei Device Co., Ltd. (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) requesting an inter partes review of claims 1–8 (the “challenged
`
`claims”) of U.S. Patent No. 6,754,440 B2 (Ex. 1001, “the ’440 patent”).
`
`Maxell, Ltd. (“Patent Owner”) filed a Preliminary Response (Paper 6,
`
`“Prelim. Resp.”).
`
`Institution of an inter partes review is authorized by statute when “the
`
`information presented in the petition . . . and any response . . . shows that
`
`there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`
`see 37 C.F.R. § 42.4. On April 24, 2018, the Supreme Court held that a final
`
`written decision under 35 U.S.C. § 318(a) must decide the patentability of all
`
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`
`1359–60 (2018). Taking into account the arguments presented in Patent
`
`Owner’s Preliminary Response, we determine that the information presented
`
`in the Petition establishes that there is a reasonable likelihood that Petitioner
`
`would prevail in showing the unpatentability of all challenged claims.
`
`Accordingly, we institute an inter partes review of all challenged claims
`
`(claims 1–8) of the ’440 patent, based on all grounds raised in the Petition.
`
`
`
`II. BACKGROUND
`
`A. Real Parties-in-Interest and Related Matters
`
`Petitioner identifies Huawei Technologies Co., Ltd., Huawei Device
`
`USA, Inc., Huawei Investment & Holding Co., Ltd., Huawei Device
`
`(Dongguan) Co., Ltd., Huawei Tech. Investment Co., Ltd., and Huawei
`
`2
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`IPR2018-00233
`Patent 6,754,440 B2
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`Device (Hong Kong) Co., Ltd., as additional real parties-in-interest for
`
`Petitioner. Pet. 3–4.
`
`The parties indicate that the ’440 patent is the subject of the following
`
`district court litigation: Maxell, Ltd. v. Huawei Device USA Inc., et al., Case
`
`No. 5:16-cv-00178-RWS (E.D. Tex.). Id. at 4; Paper 5, 1.
`
`B. The ’440 Patent
`
`The ’440 patent generally relates to recording and reproducing
`
`moving pictures and still pictures to and from a recording medium.
`
`Ex. 1001, 1:12–15. The ’440 patent describes a digital camera that can
`
`record in either a moving picture photographing mode or a still picture
`
`photographing mode depending on a switch setting. Id. at 6:29–7:12.
`
`Figure 3 of the ’440 patent is reproduced below.
`
`
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`3
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`Patent 6,754,440 B2
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`Figure 3 is a system block diagram of an exemplary video recording camera
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`of the ’440 patent. Id. at 8:34–36. As shown in Figure 3 above, the camera
`
`includes switch 116, which indicates the user selection of the recording
`
`mode between moving picture photographing and still picture
`
`photographing. Id. at 9:8–10.
`
`When the moving picture photographing mode is selected (as
`
`indicated by switch 116), compressed moving streams are generated in
`
`moving picture compressing unit 105 and recorded on recording medium
`
`114. Id. at 9:16–21. At the same time, pictures of a frame representing the
`
`moving picture being recorded (e.g., the picture of the start frame) are read
`
`from moving picture memory 107 and compressed by screen compressing
`
`unit 117 to produce thumbnail-sized (e.g., 160 pixels by 120 pixels) pictures.
`
`Id. at 9:21–29. When the recording of the moving picture is ended, fine still
`
`picture compressing unit 106 compresses the thumbnail pictures and records
`
`them as thumbnail file data on recording medium 114. Id. at 9:29–33.
`
`When the still picture photographing mode is selected, still picture file
`
`data are generated in fine still picture compressing unit 106 and recorded on
`
`recording medium 114. Id. at 9:36–39. In addition, a thumbnail picture of
`
`the still picture is generated by screen compressing unit 117 and recorded on
`
`recording medium 114 as thumbnail file data. Id. at 9:43–53.
`
`Moving pictures are compressed using a moving picture encoding
`
`standard, such as the MPEG (Moving Picture Expert Group) standard,
`
`whereas still pictures are typically compressed using the JPEG (Joint
`
`Photographic coding Experts Group) standard. Id. at 1:27–61, 8:45–51.
`
`In the review mode (i.e., when reproducing the pictures from the
`
`recording medium), a list of thumbnail pictures on the recording medium is
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`displayed on a display device. Id. at 12:10–21. The user selects the desired
`
`picture for playback by selecting the corresponding thumbnail on the display
`
`screen, and the selected picture is displayed. Id. at 12: 21–50.
`
`C. Illustrative Claim
`
`All of the claims of the ’440 patent are directed to a “video
`
`reproducing” method or apparatus. Claims 1, 3, 5, and 7 are the independent
`
`claims. Claim 1 is illustrative of the challenged claims and is reproduced
`
`below with added paragraph breaks and indentations for readability:
`
`1. A video reproducing method, comprising:
`
`reproducing, from a recording medium, at least moving pictures
`encoded by a first encoding method and first pictures
`having a smaller number of pixels than the moving
`pictures,
`
`wherein the moving pictures, the first pictures, as well as
`still pictures encoded by a second encoding method, and
`second pictures corresponding to the still pictures and
`having a smaller number of pixels than the still pictures
`are recorded on the recording medium;
`
`outputting a plurality of reproduced ones of the first pictures; and
`
`outputting a moving picture corresponding to any selected first
`picture.
`
`Ex. 1001, 14:47–61.
`
`
`D. Asserted Prior Art and Grounds of Unpatentability
`
`Petitioner cites the following references in its challenges to
`
`patentability.
`
`Reference and Relevant Date(s)
`
`Designation
`
`Exhibit No.
`
`U.S. Patent No. 6,683,649 B1(filed Dec. 31,
`1998; issued Jan. 27, 2004)
`
`Anderson I
`
`Ex. 1003
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`Patent 6,754,440 B2
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`
`Reference and Relevant Date(s)
`
`Designation
`
`Exhibit No.
`
`U.S. Patent No. 5,903,309 (filed Sept. 19,
`1996; issued May 11, 1999)
`
`Anderson II
`
`Ex. 1004
`
`Japanese Patent Application Publication No.
`H11-176137 (published July 2, 1999)
`
`Okuda
`
`Ex. 10051
`
`
`Petitioner also relies on the Declaration of Dan Schonfeld, Ph.D.
`
`(Ex. 1016).
`
`
`
`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged
`
`Statutory Basis
`
`References
`
`1–8
`
`1–8
`
`
`Pet. 6–7.
`
`§ 103(a)
`
`Anderson I and Anderson II
`
`§ 103(a)
`
`Okuda and Anderson I
`
`III. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`
`
`1 Exhibit 1005 is an English translation of the original Japanese Patent
`Application Publication No. H11-176137 (Ex. 1006). Petitioner has filed
`with Exhibit 1005 an affidavit attesting to the accuracy of the translation, as
`required by 37 C.F.R. § 42.63(b). See Ex. 1005, 1 (Certificate of Accuracy).
`Patent Owner does not dispute the accuracy of the English translation in
`Exhibit 1005 at this time. Our citations to Okuda are to Exhibit 1005, the
`certified English translation.
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`6
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`Patent 6,754,440 B2
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`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`
`the broadest reasonable interpretation standard in inter partes reviews).
`
`Under the broadest reasonable interpretation standard, and absent any
`
`special definitions, claim terms generally are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`art, in view of the specification. In re Translogic Tech. Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). A particular embodiment appearing in the written
`
`description generally is not incorporated into a claim if the claim language is
`
`broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`
`Cir. 1993).
`
`Petitioner contends that the claim terms of the challenged claims
`
`reciting “means” should be interpreted as means-plus-function limitations
`
`under § 112, ¶ 6,2 as follows. Pet. 15–17.
`
` Term
`
`Proposed Construction
`
`“reproducing means for
`reproducing, from a recording
`medium, at least moving pictures
`encoded by a first encoding method
`and first pictures having a smaller
`number of pixels than the moving
`pictures, wherein the moving
`pictures, the first pictures, as well as
`still pictures encoded by a second
`encoding method, and second
`pictures corresponding to the still
`
`Claimed Function: “reproducing,
`from a recording medium, at least
`moving pictures encoded by a first
`encoding method and first pictures
`having a smaller number of pixels
`than the moving pictures, wherein the
`moving pictures, the first pictures, as
`well as still pictures encoded by a
`second encoding method, and second
`pictures corresponding to the still
`pictures and having a smaller number
`
`
`2 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as
`35 U.S.C. § 112(f). Because the ’440 patent has a filing date prior to
`September 16, 2012, the effective date of § 4(c) of the AIA, we refer to the
`pre-AIA version of 35 U.S.C. § 112. See AIA § 4(e).
`
`7
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`
` Term
`
`Proposed Construction
`
`pictures and having a smaller
`number of pixels than the still
`pictures are recorded on the
`recording medium” (claims 5, 7)
`
`of pixels than the still pictures are
`recorded on the recording medium”
`
`Corresponding structure:
`“reproducing control unit 118,
`moving picture expanding unit 120,
`and thumb nail picture expanding unit
`122” (and their equivalents)
`
`“first outputting means for
`outputting a plurality of reproduced
`ones of the first pictures” (claim 5)
`
`Claimed Function: “outputting a
`plurality of reproduced ones of the
`first pictures”
`
`“second outputting means for
`outputting a moving picture
`corresponding to any selected first
`picture” (claim 5)
`
`“displaying means for displaying at
`least one of the moving pictures, the
`still pictures, and the first and
`second pictures; wherein the
`displaying means displays a
`plurality of reproduced ones of the
`first pictures, and wherein the
`displaying means displays ones of
`the moving pictures corresponding
`to any selected first pictures” (claim
`7)
`
`Corresponding structure: “video
`output terminal 125” (and its
`equivalents)
`
`Claimed Function: “outputting a
`moving picture corresponding to any
`selected first picture”
`
`Corresponding structure: “video
`output terminal 125” (and its
`equivalents)
`
`Claimed Function: “displaying at
`least one of the moving pictures, the
`still pictures, and the first and second
`pictures; wherein the displaying
`means displays a plurality of
`reproduced ones of the first pictures,
`and wherein the displaying means
`displays ones of the moving pictures
`corresponding to any selected first
`pictures”
`
`Corresponding structure: “display
`medium 130, such as a liquid crystal
`panel” (and its equivalents)
`
`8
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`Patent 6,754,440 B2
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`
`
`For each of these claim terms, Petitioner discusses the claim language
`
`at issue and provides citations to the written description in support of
`
`Petitioner’s proposed constructions. Pet. 15–17. Patent Owner does not
`
`dispute Petitioner’s proposed constructions for the means-plus-function
`
`limitations set forth above. Prelim. Resp. 8–9. In addition, Patent Owner
`
`notes that, in the related district court litigation, the parties stipulated to the
`
`construction for the “display means” limitation as proposed by Petitioner in
`
`the Petition. Id. at 9 (citing Ex. 2003, 13–14).
`
`Based on the current record, we are persuaded that Petitioner’s
`
`proposed constructions are sufficiently supported by the intrinsic record as
`
`cited by Petitioner. See Pet. 16 (discussing the corresponding structure for
`
`“reproducing means” described in the Specification (citing Ex. 1001,
`
`Fig. 5 (118, 120, and 122), 11:37–40, 45–49, 51–54, 12:12–17, 25–32,
`
`Fig. 6 (118, 120, and 122), 13:10–14, 18–22, 25–28)), 16–17 (discussing the
`
`corresponding structure for “first outputting means” and “second outputting
`
`means” described in the Specification (citing Ex. 1001, Fig. 5 (125), 11:59–
`
`63, 12:17–21)), 17 (discussing the corresponding structure for “displaying
`
`means” described in the Specification (citing Ex. 1001, Fig. 6 (130), 13:45–
`
`47, 49–51, 54–57, 62–63)). For purposes of this Decision, we adopt
`
`Petitioner’s proposed constructions of the means-plus-function limitations as
`
`summarized in the table above.
`
`The parties also address the limitation in claims 1, 3, 5, and 7 reciting
`
`“still pictures encoded by a second encoding method, and second pictures
`
`corresponding to the still pictures and having a smaller number of pixels
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`than the still pictures are recorded” and agree that this term does not need to
`
`be construed expressly. Pet. 18; Prelim. Resp. 9.
`
`On this record and for purposes of this Decision, we do not find it
`
`necessary to make formal claim constructions for any claim terms other than
`
`the means-plus-function limitations discussed above. See, e.g., Nidec Motor
`
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`
`Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and
`
`only to the extent necessary to resolve the controversy.’” (quoting Vivid
`
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`B. Obviousness Over the Combination of Anderson I and Anderson II
`
`Petitioner contends claims 1–8 are unpatentable as obvious under
`
`35 U.S.C. § 103(a) over the combined teachings of Anderson I and
`
`Anderson II. Pet. 28–56. Petitioner explains how this proffered
`
`combination teaches or suggests the subject matter of each challenged claim,
`
`and provides reasoning as to why one of ordinary skill in the art would have
`
`been prompted to modify or combine the teachings of these references. Id.
`
`Petitioner also relies on the Declaration of Dr. Schonfeld to support its
`
`positions. Id. For the reasons discussed below, we are persuaded that
`
`Petitioner has demonstrated a reasonable likelihood that it will prevail in
`
`challenging claims 1–8 as obvious over the combination of Anderson I and
`
`Anderson II.
`
`1. Relevant Principles of Law
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter, as a whole, would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which the subject matter
`
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`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`
`question of obviousness is resolved on the basis of underlying factual
`
`determinations, including: (1) the scope and content of the prior art; (2) any
`
`differences between the claimed subject matter and the prior art; (3) the level
`
`of skill in the art;3 and (4) where in evidence, so-called secondary
`
`considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`
`analyze this asserted ground based on obviousness with the principles
`
`identified above in mind.
`
`2. Overview of Anderson I (Ex. 1003)
`
`Anderson I describes a digital video camera (DVC) capable of
`
`capturing and displaying various types of image data including digital video
`
`and high resolution still images. Ex. 1003, 4:4–9.
`
`
`3 Relying on the testimony of Dr. Schonfeld, Petitioner offers an assessment
`as to the level of skill in the art at the time of the invention of the ’440
`patent. Pet. 7 (citing Ex. 1016 ¶ 17). Petitioner also asserts that the prior art
`of record reflects the level of skill in the art. Id. At this time, Patent Owner
`does not propose an alternative assessment. To the extent necessary, and for
`purposes of this Decision, we accept the assessment offered by Petitioner as
`it is consistent with the ’440 patent and the asserted prior art.
`
`4 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response. Therefore, at this preliminary
`stage, secondary considerations do not constitute part of our analysis.
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`
`Figure 1 of Anderson I is reproduced below.
`
`
`
`Figure 1 is a block diagram illustrating an exemplary digital video camera of
`
`Anderson I. Id. at 3:8–10. As shown in Figure 1 above, DVC 100
`
`comprises imaging device 110 and computer 112. Id. at 4:10–11. Image
`
`frames captured by imaging device 110 are transferred to computer 112 for
`
`processing, storage, and display. Id. at 4:14–17. Computer 112 includes
`
`image processing digital signal-processor (DSP) 116, video codec 118,
`
`CPU 124, DRAM 126, mass storage device 122, display screen 140, and
`
`buttons and dials 146 for operating DVC 100. Id. at 4:18–29.
`
`When the user initiates the video capture function of the DVC to
`
`record digital video, the streaming video output from DSP 116 is transferred
`
`to video codec 118 for compression and storage. Id. at 5:63–66. Video
`
`codec 118 performs MPEG-2 encoding on the streaming video during
`
`recording, and performs MPEG-2 decoding during playback. Id. at 5:66–
`
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`6:1. After the compressed MPEG-2 data is generated, CPU 124 transfers the
`
`MPEG-2 data to removable mass-storage device 122 for storage. Id. at
`
`6:18–21.
`
`According to Anderson I, DVC 100 is also capable of capturing high-
`
`resolution still images in addition to video. Id. at 6:40–41. When the user
`
`initiates the capture function to capture a still or sequential image, the
`
`captured image is compressed, typically in the JPEG format, and stored as
`
`an image file on the mass storage device 122. Id. at 6:41–52.
`
`In the review mode, DVC 100 enables the user to rapidly review the
`
`contents of the DVC. Id. at 7:50–51. Figure 4A of Anderson I is
`
`reproduced below.
`
`Figure 4A depicts the review mode screen of the DVC in an exemplary
`
`embodiment of Anderson I. Id. at 7:54–55. As shown in Figure 4A above,
`
`
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`the review mode screen displays a series of object cells 300 that represent
`
`the media objects stored on the DVC 100. Id. at 7:60–62. Figure 4A shows
`
`nine object cells 300 displayed on display screen 140. Id. at 7:62–64.
`
`In the case of a still image, object cell 300 displays a thumbnail of the
`
`media object, which is a small, low-resolution version of the image. Id. at
`
`8:7–10. In the case of video segments, object cell 300 displays a
`
`representative thumbnail or frame from the video, typically the first frame of
`
`the video. Id. at 8:10–14.
`
`According to Anderson I, the user may navigate through the object
`
`displays to select and mark the desired objects and create an ordered list of
`
`objects. Id. at 8:66–9:6. The ordered list is then saved as a slide show. Id.
`
`at 9:6–7. When the slide show is presented, each media object comprising
`
`the slide show is automatically played back and displayed on display screen
`
`140 or on an external television. Id. at 9:8–13.
`
`3. Overview of Anderson II (Ex. 1004)
`
`Anderson II describes a method and system for displaying a series of
`
`images captured by a digital camera, which includes a view finder.
`
`Ex. 1004, Abstract. In the review mode, the view finder displays a series of
`
`cells that represent the digital images that have been captured in the digital
`
`camera. Id. at 5:1–4. Each cell displays a small-sized image corresponding
`
`to one of the captured images. Id. at 5:5–6.
`
`Anderson II also describes extending the file format used for storing a
`
`captured image to include a thumbnail image in addition to the JPEG data
`
`for the image. Id. at 6:7–15. According to Anderson II, this extended file
`
`format eliminates the need for processing captured images when displaying
`
`image cells. Id. at 6:3–6. By including the thumbnail images in the stored
`
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`files, the digital camera of Anderson II can display the thumbnail images
`
`directly from the files instead of generating thumbnails by decompressing
`
`and resizing the JPEG data. Id. at 6:16–24.
`
`4. Reasons to Combine Anderson I and Anderson II
`
`Petitioner contends that a person of ordinary skill in the art would
`
`have had ample reasons to combine Anderson I and Anderson II. Pet. 40.
`
`To start, Petitioner argues that one of ordinary skill would have readily
`
`located Anderson II when reviewing Anderson I because Anderson I
`
`explicitly cross-references Anderson II. Id. (citing Ex. 1003, 1:13–17).
`
`Next, Petitioner asserts that combining Anderson I and Anderson II
`
`would have been the use of known techniques to improve similar devices in
`
`the same way. Id. at 41. Petitioner argues that Anderson I and Anderson II
`
`describe similar devices because both disclose a digital camera that records
`
`video and a still picture, and both disclose displaying thumbnail pictures
`
`with similar user interfaces for the users to select to display the
`
`corresponding video. Id. (citing Ex. 1003, 4:4–9, 7:41–49, 7:65–8:3, 12:16–
`
`21, Fig. 4A; Ex. 1004, 1:29–34, 2:47–48, 5:52–54, Fig. 4).
`
`Petitioner further asserts that, while Anderson I is silent on where the
`
`thumbnails are stored, Anderson II teaches that the thumbnail pictures
`
`should be recorded on the recording medium so that the thumbnails can be
`
`displayed (i.e., reproduced) “directly from” the recording medium. Id. at
`
`41–42 (citing Ex. 1004, 3:61–4:2, 6:7–28, 7:19–33). Petitioner argues that a
`
`person of ordinary skill would have been motivated to combine
`
`Anderson II’s technique of reproducing thumbnail pictures stored on the
`
`recording medium with the digital camera of Anderson I because doing so
`
`would have resulted in speed gain and power savings from eliminating or
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`avoiding the processing of the JPEG data to generate the thumbnails each
`
`time they are to be displayed. Id. at 42–43 (citing Ex. 1016 ¶¶ 106–110).
`
`Relying upon the testimony of Dr. Schonfeld, Petitioner further asserts that a
`
`person of ordinary skill in the art would have had a reasonable expectation
`
`of success in applying the known technique of storing thumbnails on the
`
`recording medium (as described in Anderson II) to a known device, i.e., the
`
`digital camera described in Anderson I. Id. at 44 (citing Ex. 1016 ¶ 110).
`
`Patent Owner asserts that a person of ordinary skill in the art would
`
`not have combined Anderson I and Anderson II because they are directed to
`
`solving different problems and use different structures to solve different
`
`problems. Prelim. Resp. 19. Patent Owner argues that Anderson I is
`
`directed to creating a multimedia presentation, i.e., a slide show, from
`
`various media objects stored on the digital camera, whereas Anderson II is
`
`directed to a method and system for displaying captured images in a digital
`
`camera and for supporting the direct display of image cells in the view
`
`finder. Id. at 19–20.
`
`We do not agree with Patent Owner’s argument because, based on the
`
`current record, we do not find that Anderson I’s teachings are limited to
`
`creating a slide show. As discussed in Section III.B.2 above (Overview of
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`Anderson I), Anderson I also includes disclosures on capturing, encoding,
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`recording, and reproducing video and still pictures, as well as displaying
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`thumbnail pictures for the users to select to display the corresponding video
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`or still picture. Contrary to Patent Owner’s argument, we consider
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`Anderson I “for everything that it teaches, not simply the described
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`invention or a preferred embodiment.” In re Applied Materials, Inc., 692
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`F.3d 1289, 1298 (Fed. Cir. 2012).
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`Furthermore, even if Anderson I is primarily directed to creating slide
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`shows, that fact alone would not have precluded a person of ordinary skilled
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`in the art from combining Anderson I with Anderson II for different
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`applications. “On the issue of obviousness, the combined teachings of the
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`prior art as a whole must be considered.” EWP Corp. v. Reliance Universal
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`Inc., 755 F.2d 898, 907 (Fed. Cir. 1985); see also Raytheon Co. v. Sony
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`Corp., No. 2017-1554, 2018 WL 1598724, at *3 (Fed. Cir. Apr. 2, 2018)
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`(non-precedential) (“That Liu’s claimed invention is directed primarily to
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`star sensor applications does not preclude a skilled artisan from combining
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`Liu with silicon-based references for different applications.”).
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`Patent Owner further asserts that Anderson I and Anderson II are not
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`compatible because combining Anderson I and Anderson II would require a
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`simplification of Anderson I’s system, which will remove features that are
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`required to generate presentations in Anderson I. Prelim. Resp. 23. Patent
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`Owner argues this is so because “Anderson II is only concerned with still
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`images and displaying such still images in the view finder while keeping the
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`simplicity of its camera.” Id. at 22–23 (emphasis added).
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`We do not agree with Patent Owner’s argument because it is not
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`necessary that the cameras of Anderson I and Anderson II be physically
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`combinable to render claims from the ’440 patent obvious. “The test for
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`obviousness is not whether the features of a secondary reference may be
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`bodily incorporated into the structure of the primary reference . . . . Rather,
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`the test is what the combined teachings of the references would have
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`suggested to those of ordinary skill in the art.” MCM Portfolio LLC v.
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`Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (citing In re
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`Keller, 642 F.2d 413, 425 (CCPA 1981)); see also In re Etter, 756 F.2d 852,
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`859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be
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`incorporated in Ambrosio are basically irrelevant, the criterion being not
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`whether the references could be physically combined but whether the
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`claimed inventions are rendered obvious by the teachings of the prior art as a
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`whole.”).
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`On this record and for purposes of this Decision, we are persuaded
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`Petitioner has articulated a reason the ordinarily skilled artisan would have
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`combined Anderson I and Anderson II in the manner proposed by Petitioner
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`based on rational underpinnings (i.e., the speed gain and power savings from
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`eliminating the processing of the image data to generate the thumbnails for
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`display).
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`5. Independent Claims 1 and 3
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`In this asserted ground of obviousness based on the combined
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`teachings of Anderson I and Anderson II, Petitioner relies on Anderson I to
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`teach most of the limitations recited in independent claims 1 and 3, except
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`for the limitations relating to reproducing first pictures from a recording
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`medium and the first pictures and second pictures being recorded on the
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`recording medium, for which Petitioner relies on Anderson II. Pet. 28–40,
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`44–45. Because of the similarity between the limitations recited in claims 1
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`and 3, our discussion below focuses on claim 1.
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`a. Limitation [1a] of Claim 1:
`“reproducing, from a recording medium, at least moving pictures encoded
`by a first encoding method and first pictures having a smaller number of
`pixels than the moving pictures”
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`Petitioner identifies as claim limitation [1a] the limitation of claim 1
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`that recites, “reproducing, from a recording medium, at least moving
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`pictures encoded by a first encoding method and first pictures having a
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`smaller number of pixels than the moving pictures.” Pet. 29. Petitioner
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`contends that the combination of Anderson I and Anderson II teaches this
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`limitation. Id. at 29–32. First, Petitioner asserts that Anderson I discloses
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`“reproducing, from a recording medium, at least moving pictures encoded by
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`a first encoding method” because Anderson I describes recording MPEG
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`video on mass storage device 122 and decoding the video during playback
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`(i.e., reproduction of the video). Id. at 29–30 (emphasis added) (citing
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`Ex. 1003, 5:66–6:1, 6:17–21).
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`Next, Petitioner asserts that Anderson I discloses “reproducing . . .
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`first pictures having a smaller number of pixels than the moving pictures”
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`because Anderson I’s video has a corresponding thumbnail picture, which
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`has a smaller number of pixels than the corresponding video. Id. at 30
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`(emphasis added) (citing Ex. 1003, 8:10–14). Petitioner also references
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`Figure 4A of Anderson I (reproduced above) and argues that Figure 4A
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`shows nine thumbnails displayed (i.e., reproduced) on the screen. Id.
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`Petitioner further relies on Anderson II to teach reproducing the first
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`pictures “from a recording medium,” as recited in claim 1. Id. at 31–32, 33–
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`36. As discussed above with respect to the reasons to combine Anderson I
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`and Anderson II, Petitioner relies on Anderson II for its teaching of
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`recording the thumbnail pictures on the recording medium and “display[ing]
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`the thumb nail image . . . directly from” the recording medium. Id. at 33–34
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`(citing Ex. 1004, 6:16–28), 42. Citing the testimony of Dr. Schonfeld,
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`Petitioner asserts that a person of ordinary skill in the art would have
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`understood that applying this teaching of Anderson II to Anderson I to
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`record Anderson I’s thumbnail pictures on mass storage device 122 would
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`have been desirable because the proposed combination improves the speed
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`at which the digital camera can display multiple thumbnail pictures at the
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`same time. Id. at 31–32 (citing Ex. 1004, 6:16–28; Ex. 1016 ¶ 73).
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`In addition, Petitioner argues that it would have been obvious to a
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`person of ordinary skill in the art to record the thumbnail pictures of
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`Anderson I in mass storage device 122 to have them available for output and
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`display at a later time without additional computation. Id. at 31 (citing
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`Ex. 1016 ¶ 72).
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`Patent Owner asserts that Petitioner’s argument and evidence are
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`deficient because Petitioner fails to demonstrate how Anderson II discloses
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`recording a thumbnail for a moving picture. Prelim. Resp. 13. We do not
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`agree with Patent Owner’s argument because, as discussed above, Petitioner
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`relies on the combination of Anderson I and Anderson II to teach limitation
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`[1a]. Nonobviousness cannot be established by attacking the references
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`individually when the unpatentability challenge is based on a combination of
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`prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed.
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`Cir. 1986).
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`Patent Owner also asserts that “it is unclear what disclosure from what
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`reference Petitioner relies on for this limitation” and lists several examples
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`of the allegedly “confusing statements” made by Petitioner. Prelim.
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`Resp. 12 (citing Pet. 28, 29, 31, 33, 34, 42). We have reviewed Petitioner’s
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`arguments and evidence, including those presented in the pages cited by
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`Patent Owner, and find that Petitioner’s arguments can be more fairly
`
`characterized as alternative arguments. We note that, for purposes of this
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`Decision, it is not necessary for us to consider all of these alternative
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`arguments in detail to decide whether to institute a review. Furthermore, we
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`find Petitioner’s arguments discussed herein sufficiently comprehensible to
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`demonstrate a reasonable likelihood of prevailing with respect to the
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`challenged claims.5
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`Based on the record presented, we are persuaded that Petitioner has
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`demonstra