18
Mar
By Eric Schweibenz
Further to our January 26, 2011 post, on March 8, 2011, Chief ALJ Paul J. Luckern issued the public version of the Initial Determination (“ID”) (dated January 24, 2011) in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”) and the Respondents are Research In Motion, Ltd., Research In Motion Corporation (collectively, “RIM”), and Apple Inc. (“Apple”) (RIM and Apple collectively, the “Respondents”).  The Commission instituted the investigation on February 17, 2010.  A claim construction hearing was conducted on May 24-25, 2010 and ALJ Luckern issued an initial determination construing certain claim language of asserted claim 15 of U.S. Patent No. 6,292,218 (the ‘218 patent) on June 22, 2010.  See our July 21, 2010 and July 27, 2010 posts for more details.  On October 20, 2010, the Commission issued a notice that ALJ Luckern’s June 22, 2010 initial determination on claim construction is actually an order rather than an initial determination.  See our October 20, 2010 post for more details.   A prehearing conference was conducted on September 1, 2010, and an evidentiary hearing was conducted on September 1, 2, 3, 7, 8, and 9, 2010.

The ‘218 patent is entitled “Electronic Camera For Initiating Capture of Still Images While Previewing Motion Images” and is assigned to Kodak.  The patent lists Kenneth A. Parulski and Timothy J. Tredwell as named inventors.  The sole claim in issue is claim 15, which recites an electronic still camera for initiating capture of a still image while previewing motion images on a display, generally comprising an image sensor, a motion processor, a color display, a capture button, a still processor, and a digital memory.

According to the ID, ALJ Luckern determined that there was no violation of Section 337 in this investigation by RIM or Apple.  Specifically, ALJ Luckern determined, inter alia, that (1) claim 15 of the ‘218 patent is invalid as obvious under 35 U.S.C. § 103 in view of certain prior art references, (2) the ‘218 patent is not invalid for lack of written description or indefiniteness under 35 U.S.C. § 112, (3) RIM’s and Apple’s products do not infringe claim 15 of the ‘218 patent, (4) the ‘218 patent is enforceable, (5) Kodak has established a domestic industry, and (6) there is no patent exhaustion.  ALJ Luckern further recommended that, in the event that the Commission determines that there has been a violation of Section 337, limited exclusion orders and cease and desist orders should issue, but no bond should be required.

Claim Construction

In his original June 22, 2010 claim construction order, ALJ Luckern had construed the following terms in claim 15 of the ‘218 patent:  (1) “motion processor” and “still processor”; (2) “at least three different colors”; (3) “capture button”; (4) “initiating capture of a still image while previewing the motion images”; (5) “each captured image having a first number of color pixel values provided in a first color pattern”; (6) “captured image”; (7) “first number of color pixel values”; and (8) “first color pattern.” 

During a teleconference on August 30, 2010 and again at the September evidentiary hearing, the parties argued over whether a motion for reconsideration standard should apply with respect to whether or not to modify the original claim construction order.  Kodak argued that it was appropriate for ALJ Luckern to engage in a “rolling” claim construction, and that therefore a motion for reconsideration standard should not apply with respect to the June 22, 2010 claim construction order.  Apple, RIM, and the Commission Investigative Staff (“OUII”) all argued that a motion for reconsideration standard should apply with respect to the claim construction order.  Apple and RIM further argued that the claim construction set forth in the June 22, 2010 order should not be modified.

ALJ Luckern ultimately agreed with the Respondents and OUII that a motion for reconsideration standard should apply to the claim construction order — as it would for any other order issued by an ALJ.  Accordingly, ALJ Luckern determined that in order for his claim construction to be reconsidered, a party would need to show that there had been a change of fact, a change of law, or that the prior order was clearly erroneous or manifestly unjust.  Since neither Kodak nor OUII could show a change of fact or law, the ALJ determined that any party asking for a modification of the claim construction would bear the burden of showing that there had been a clear error of law or a manifest injustice with respect to the claim construction set forth in the original order.

ALJ Luckern’s original construction of the claim term “motion processor” was “a processor that processes a series of motion images using digital image processing that is different and distinct in circuitry from the digital image processing of the still processor.”  The ALJ’s original construction of “still processor” was “a processor that processes a captured image using digital image processing that is different and distinct in circuitry from the digital image processing of the motion processor,” or in other words, circuitry that is not shared by the motion processor and the still processor and thus is not overlapping.  Kodak and OUII disagreed with these constructions and argued that there should be no requirement that the circuitry for processing the motion images be different and distinct from the circuitry for processing the still images.  Apple and RIM argued that the ALJ’s original constructions were correct and that in any event, Kodak and OUII had not shown that the original constructions should be overturned under the motion for reconsideration standard.  After considering the parties’ arguments, ALJ Luckern rejected Kodak’s and OUII’s positions and upheld his original constructions of “motion processor” and “still processor.”

ALJ Luckern’s original construction of the claim term “at least three different colors” was such that the term referred to three or more distinct colors, for example red, blue, and green, where each color is a phenomenon of light or visual perception that enables one to differentiate otherwise identical objects.  Kodak and OUII argued that this construction was incorrect insofar as it mandated that color could not be represented by numbers, e.g., in a YCC format, within the processor of a digital camera.  ALJ Luckern rejected these arguments and maintained his original claim construction for the term “at least three different colors.”

Accordingly, ALJ Luckern maintained all of the original claim constructions set forth in his June 22, 2010 order.

Infringement

ALJ Luckern next considered whether Apple’s and RIM’s accused products infringe claim 15 of the ‘218 patent under his claim construction.  According to the ID, the accused products include Apple’s iPhone 3G, iPhone 3GS, and iPhone 4 and RIM’s Bold 9650, Tour 9630, Storm 9550, 9530, Bold 9700, Pearl 9100, Curve 8900, Bold 9000, Curve 8350i, 8330, 8320, 8310, 8300, Pearl 8230, 8220, 8130, 8120, 8110, Curve 8530, 8520, and Pearl 8100.  Please note that much of ALJ Luckern’s discussion of infringement has been redacted from the public version of the ID.

With respect to the “motion processer” and “still processor” limitations, ALJ Luckern determined that Apple’s accused products do not infringe because they have common circuitry for processing motion and still images, and thus they do not have a motion processor or still processor as those terms have been construed by the ALJ.

With respect to the claimed phrase, “a capture button for initiating capture of a still image while previewing the motion images presented on the color display,” ALJ Luckern found that RIM did not contest that its accused products meet the limitation.  Apple argued that its accused products did not meet this limitation because those products do not include “a capture button” that is physically located on the camera, but rather merely include a transient software element appearing on a touch screen.  ALJ Luckern rejected this argument, however, and found that Apple’s accused products do in fact have a capture button in the form of a camera icon that appears on the accused products’ screens when they are in camera mode.  Nevertheless, ALJ Luckern ultimately determined that only the iPhone 3G — and not the iPhone 3GS and iPhone 4 — infringed the entire limitation “a capture button for initiating capture of a still image while previewing the motion images presented on the color display.”

As to the claimed phrase, “including at least three different colors,” ALJ Luckern found that Apple’s and RIM’s accused products do not literally infringe the term because they use a YCC compressed image data format associated with the JPEG standard, and thus do not respond to the term under the ALJ’s claim construction, which requires that a color be something that can be perceived by a human.  Kodak argued that Apple’s and RIM’s products nevertheless infringe this claim term under the doctrine of equivalents.  However, the ALJ rejected the doctrine of equivalents argument on the basis of prosecution history estoppel because the claim phase “including at least three different colors” had been added during prosecution to overcome a prior art reference.

Accordingly, ALJ Luckern determined that the none of Apple’s or RIM’s accused products infringe asserted claim 15 of the ‘218 patent.

Invalidity

With respect to invalidity, Apple and RIM both argued that claim 15 of the ‘218 patent is invalid as obvious over the prior art, including Japanese Patent Application Laid-Open Disclosure No. H5-122574 (“Mori”), U.S. Patent No. 4,887,161 (“Watanabe”), Sharp ViewCam Technical Manual, Operation Manual and Information Sheet, U.S. Patent No. 3,971,065 (“Bayer”), U.S. Patent No. 4,837,628 (“Sasaki”), U.S. Patent No. 5,493,335 (“Parulski”), and Timothy Tredwell, Sensors and Signal Processing for Digital Electronic Photography, Optoelectronics — Devices & Technologies (“Tredwell”).  RIM further argued that Mori anticipates claim 15 of the ‘218 patent.  Additionally, Apple and RIM argued that the phrase “representative of a series of motion images to be perceived” in claim 15 of the ‘218 patent is indefinite and renders the claim invalid under  35 U.S.C. § 112 ¶ 2.  Apple further argued that the ‘218 patent is invalid for failure to satisfy the written description requirement of 35 U.S.C. § 112 ¶ 1.  Kodak and OUII both argued that none of the prior art cited by RIM and/or Apple invalidates claim 15 of the ‘218 patent, and further that the indefiniteness and written description arguments should also fail.

As to Mori, ALJ Luckern found that the dispute between the parties centered on whether Mori’s “image capture device,” either alone or in combination with Parulski, would disclose to a person of ordinary skill in the art an “image capture device” that also discloses a motion processor, a color display, and a capture button as claimed in claim 15 of the ‘218 patent.  More specifically with respect to the motion processor, the ALJ found that the dispute was over whether the motion processor of Mori, either alone or in combination with Parulski, generates a second, lesser number of color pixel values in a second, different color pattern than the first number of color pixel values in the first color pattern.  ALJ Luckern ultimately determined that while Mori teaches reduction of pixels at the image sensor, it does not disclose whether pixel reduction can occur at the motion processor.  However, the ALJ further found that Parulski provides a finite number of options for achieving pixel reduction and indicates that implementation of pixel reduction at different locations is a design choice, and thus it would have been obvious to one of ordinary skill in the art to try to achieve pixel reduction at the motion processor of Mori based on the techniques disclosed in Parulski.  With respect to the color display, ALJ Luckern found that while Mori discloses the use of color pixels, the plain text of Mori does not indicate whether output to the monitor or printer is color, black and white, or monochrome.  However, the ALJ ultimately also found that it would have been obvious to combine the device in Mori with a color display as known in the prior art to provide a color display as in claim 15 of the ‘218 patent.  Lastly, with respect to the capture button, ALJ Luckern found that the main issue was whether Mori, either alone or in combination with the prior art, includes a capture button that allows for initiating capture of still images while previewing motion images.  He ultimately concluded that Mori does disclose such a capture button.  Accordingly, ALJ Luckern determined that claim 15 of the ‘218 patent is invalid as obvious over Mori in view of Parulski, but that the claim is not invalid as anticipated by Mori alone.

As to Sasaki, ALJ Luckern found that the primary issue was whether Sasaki in combination with prior art including Tredwell, Parulski, and Mori teaches a digital motion processor that generates a second, lesser number of color pixel values in a second, different color pattern as in claim 15 of the ‘218 patent.  The ALJ found that Sasaki does not disclose any digital processing of motion or still images or include any indication as to why analog processing might be preferred over digital processing.  However, he further found that Tredwell does explain the advantages of using digital processing.  ALJ Luckern also found that Tredwell discloses a chipset developed to implement digital processing of motion and still images in order to capitalize on the advantages of digital processing.  Accordingly, the ALJ found that it would have been obvious to one of ordinary skill in the art to use digital processing as taught by Tredwell in the device of Sasaki to implement a digital processor in an electronic camera.  ALJ Luckern further found that it would have been obvious to one of ordinary skill in the art to implement digital motion image processing in Sasaki as taught by Mori.  Moreover, he found that in a device combining Sasaki with the digital processing taught in Tredwell or Mori, it would have been an obvious design choice to generate a second, lesser number of pixel values in a second, different color pattern in the motion processor, based on the teachings of Parulski.  Accordingly, ALJ Luckern determined that claim 15 of the ‘218 patent is invalid as obvious over Sasaki in combination with Tredwell and Parulski or Sasaki in combination with Mori and Parulski.

ALJ Luckern also determined that Kodak had not established that secondary considerations render claim 15 of the ‘218 patent nonobvious.  The details of the secondary considerations analysis have been redacted from the public version of the ID, however.

With respect to written description, Apple argued that the ‘218 patent specification does not support implementing a motion processor with a general purpose processor and does not support the use of overlapping circuitry for the motion processor and still processor under Kodak’s infringement theories.  However, ALJ Luckern found that these arguments were moot in view of the ALJ’s claim construction, and that, accordingly, Apple had failed to establish that the ‘218 patent is invalid under 35 U.S.C. § 112 ¶ 1.

With respect to indefiniteness, Apple and RIM argued that the term “representative of a series of motion images to be perceived” rendered claim 15 of the ‘218 patent invalid under 35 U.S.C. § 112 ¶ 2.  However, ALJ Luckern rejected this argument after finding that there was sufficient information in the ‘218 specification to give a definite meaning to the term at issue.

Unenforceability

As to unenforceability, Apple argued that the ‘218 patent is unenforceable because Kodak failed to disclose certain references to the Patent Office, including Watanabe.  RIM further argued that Kodak made misrepresentations to the Patent Office regarding a highly material Pape prior art reference.  ALJ Luckern determined that the Respondents had not clearly and convincingly shown that Watanabe was material to the patentability of the ‘218 patent or that Kodak had intent to deceive the Patent Office.  The ALJ further found that the Respondents had failed to show that Kodak had made misrepresentations regarding the Pape reference by clear and convincing evidence.  Accordingly, the ALJ determined that the ‘218 patent is enforceable.

Domestic Industry

Most of ALJ Luckern’s analysis with respect to domestic industry has been redacted from the public version of the ID.  However, the ALJ ultimately concluded that Kodak had satisfied the domestic industry requirement through its licensing activities in connection with the ‘218 patent.

Patent Exhaustion

RIM argued that, in view of the doctrine of patent exhaustion, it could not be liable for any possible infringement of the ‘218 patent.  The ALJ’s analysis of the patent exhaustion issue has been heavily redacted from the public version of the ID, but his ultimate determination was that there had been no patent exhaustion.

Remedy and Bonding

With respect to remedy, ALJ Luckern recommended that if the Commission were to find a violation of Section 337, limited exclusion orders and cease and desist orders would be appropriate.  However, the ALJ recommended that no bond be imposed during the Presidential review period.
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