Invalidity dossier
US 5713022
Image data supply system for selectively supplying a number of image data
Current assignee: Fujifilm Corp
Added 9/30/2026, 1:55:08 PM
Active provider: DeepSeek · deepseek-v4-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll verify the patent identifiers and check for any litigation/docket activity before summarizing.
Verification of the identifier
I searched for the literal string 5713022 (and the granted format US5713022 / US5713022A) and did not substitute any similar-looking numbers. Results confirmed the patent as:
- Google Patents: https://patents.google.com/patent/US5713022A/en
- EveryPatent (claim text mirror): http://www.everypatent.com/comp/pat5713022.html
CAFC 2026 docket check: My searches for 5713022 against 2026 Federal Circuit activity returned no matches. The hits returned were for unrelated patents (e.g., U.S. 7,685,545 / 8,266,571 in Oasis Tooling v. Siemens; a Disney § 101 dispute over the '268 patent). This is expected, because the patent's own record shows it expired for failure to pay maintenance fees / anticipated expiration on 2015-01-27, roughly 11 years before the current date. I cannot rule out a stray non-precedential reference, but I found no authoritative 2026 CAFC docket entry naming this patent. Treat that as "nothing found," not "confirmed absent."
Bibliographic data (from the authoritative patent text)
| Field | Value |
|---|---|
| Patent number | US 5,713,022 A |
| Title | Image data supply system for selectively supplying a number of image data |
| Inventor | Hitoshi Yamashita |
| Original assignee | Fuji Photo Film Co., Ltd. (Japan) |
| Current assignee of record | Fujifilm Corporation (via Fujifilm Holdings Corp.; name change eff. 2006-10-01, assignment eff. 2007-01-30) |
| App. no. / filing date | US 07/979,244; filed 1992-11-20 |
| Priority | 1991-11-22 (JP 3-355493; JP3355493A) |
| Issue date | 1998-01-27 |
| Status | Expired – Lifetime (anticipated expiration 2015-01-27) |
| Foreign counterpart | JP 2865467 B2; published as JPH05274375A |
| Claims | 33 total |
Primary classification: G06F16/50, G06F16/51 (still-image retrieval/indexing). Cited prior art (examiner): US 4,829,453; US 4,941,125; US 4,969,204; US 5,053,948; US 5,058,002; US 5,448,401; US 5,463,771; JP H0476836; JP H04353628; JP H03164868; JP H03231368; plus a non-patent reference (Haverson, "The Imaging Makeover," MIDRANGE Systems, v4 n21, Oct. 1991).
Abstract (as issued)
An image data supply system using optical disks each storing high resolution image data has an image data supply device which supplies a particular one or ones of the image data to a user terminal. The image data supply device constitutes a data base for searching which stores in a hard disk reduced versions of original images stored in the optical disks and search information associated with the reduced versions. When a request in the form of key words is sent from the user terminal to the image data supply device, a data base supervisor built in the supply device searches the data base of the hard disk and drives an auto changer and a compact disk reader to read desired image data immediately. The image data is sent to the user terminal over a high speed communication network.
Technical overview (context for the claims)
The system is a remote image-delivery server for high-resolution scans of 35 mm silver-halide negative film stored on photo CDs. A film scanner (2048×3027 px) feeds an image-processing device that (a) writes full-resolution frames plus an index image of 1/256-reduced thumbnails onto each CD, and (b) sends the same reduced image data to a search database held on a hard disk at the server. The server's "data base supervisor" has four parts (Fig. 2): a search-information input/output section (142), a search-information processing section (144, both database builder and search processor), an auto-changer command section (146), and a CD-reader command section (148). Search fields include CD number (IN), object/image name (HI), shot location (HH), and shot date (HU) (Fig. 3). Users at residential terminals search by keyword or by browsing the index image over a high-speed network (FDDI/token-ring, 100 Mb/s, per claim 2); the server then commands an auto changer to load the right disk into a CD reader and streams the selected full-resolution frame back. A second embodiment (Fig. 4) puts the server at a central lab (R1) linked to work stations at local labs (R2), which write received images to a new photo CD for customers who have no network terminal.
Independent claims — plain language
Claim 1 — System (apparatus).
An image-data supply system that (i) picks a wanted original image frame from among many recording media, each of which already carries both the original frames and reduced (thumbnail) versions of them; and (ii) delivers it to a terminal over a high-speed communication network. The supply device must include four cooperating elements: a search-information store on a medium separate from the recording media, holding the same reduced image data as is on the media plus associated search information; a searching means that answers a terminal request by finding the reduced image/search info and thereby locating which medium holds the wanted original frame; a medium-selecting means that physically/removably loads the multiple media and picks the right one; and a supplying means that reads the located original frame from the selected medium and sends it to the terminal over the network.
Claim 14 — Method.
The method counterpart of claim 1: provide media holding both original and reduced frames; store the identical reduced image data plus search information in a separate search store; search that store in response to a networked terminal request to locate the medium holding the wanted original frame; select that medium; read the original frame out; and transmit it to the terminal over the high-speed network.
Claim 25 — System (device/circuit terminology).
Substantively the same invention as claim 1, but rewritten using "controller / device / circuit" language: a search information controller writing to a search-information memory separate from the media (holding the same reduced data); a searching device; a medium-selecting device that detachably loads the media; and a supplying circuit that reads the located frame and delivers it over the network. (Claims 1, 14 and 25 appear to be a parallel set — apparatus, method, and apparatus-in-alternative-wording.)
Claim 29 — System (capture/authoring side).
Directed at the whole production-plus-indexing chain rather than delivery: a scanner reads image frames; an image processor generates original frames and reduced frames; a recorder writes the original and reduced frames onto respective ones of multiple recording media; a search-information store (coupled to the image processor) saves the reduced frames and search information indicating which original frames correspond to them; and a searching means identifies, from that stored reduced data + search info, which medium holds a given original frame.
Dependent-claim highlights (brief)
- Claim 2: network is a token-ring with an FDDI trunk. Claim 4 / 23–24 / 32: optical disks holding high-resolution data from silver-halide (35 mm negative) film. Claim 3: terminal has a recording device (CD writer) to re-record received images.
- Claims 5–6: the search info includes location information (where frames live on the media); the server sends reduced images (and optionally the location info) to the terminal, then acts on a returned selection signal to drive medium selection and readout.
- Claims 7–8: search info is sent with the reduced images, and requests may be keyword-based.
- Claims 10 / 19 / 33: the reduced data are the index images generated at recording time and stored with added search information.
- Claims 11–13, 17–18, 26–27, 30–31: media are detachable, specifically optical disks; original frames are high-resolution data. Claim 9/23 broadens source imagery beyond film to "images visually recorded on an image recording medium."
Uncertainty / caveats
- Everything above is grounded in the provided full patent text (Google Patents) and the EveryPatent claim mirror; I treated the patent number and all cited identifiers literally and made no corrections.
- I found no authoritative evidence of any 2026 CAFC appeal or district-court litigation involving this patent. Combined with the recorded expiration on 2015-01-27, active enforcement in 2026 would be legally impossible; any such docket hit would be an anomaly. My search tools are not a substitute for an exhaustive PACER/Docket Navigator query, so I flag this as "no results found" rather than an absolute negative.
- The OCR'd full text contains minor transcription artifacts (e.g., "dam" for "data," "ODMENS" for "EMBODIMENTS," "am sequentially" for "is sequentially"); these do not affect the bibliographic or claim substance reported here.
Generated 9/30/2026, 4:54:21 PM
Cases on file (0)
Specific litigation cases in our database that name US patent 5713022. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation involving US patent 5713022 across patent litigation sources.
The generic searches returned irrelevant results (unrelated to patent 5,713,022). Let me search litigation-specific databases.
Let me search litigation-specific databases directly for this patent number.
Litigation Search Report — U.S. Patent No. 5,713,022
Bottom line
No litigation involving U.S. Patent No. 5,713,022 is known. I could not identify any district court case, ITC proceeding, PTAB challenge (IPR/PGR/CBM), or Federal Circuit appeal in which the '022 patent was asserted, challenged, or otherwise at issue.
I want to flag this clearly and not overstate confidence: my searches of the general web and patent-litigation sources returned no hit tying this specific patent number to any case. That is consistent with a patent that was never commercially asserted, but absence of search results is not absolute proof of no litigation ever filed.
What the sources actually show
- Google Patents record for US5713022A (https://patents.google.com/patent/US5713022A) lists the patent's assignee history (Fuji Photo Film Co., Ltd. → FujiFilm Holdings → FujiFilm Corporation), its "Anticipated expiration" on 2015-01-27, and legal status "Expired - Lifetime." It contains no "Litigation" section and no "Cited By" litigation filings.
- The patent's own citation list (background art) includes US 4,969,204, US 5,440,401, US 5,463,771, etc. — these are prior art references, not litigation parties.
- Searches for the number on litigation-oriented sources (Unified Patents portal context, Docket Alarm/RPX/insight results, CourtListener) surfaced only unrelated matters and no case naming the '022 patent.
Important disambiguation — do not conflate these
During the search I encountered an unrelated item that shares the digits "5713022":
- JP 5713022 B2 is a Japanese patent (特許第5713022号), granted 2015-05-07 to NEC Corporation, titled (translated) "Wireless communication system, wireless communication method, mobile station, control method and base station." This is a completely different patent that happens to have the number "5713022" in the Japanese register. It has nothing to do with U.S. 5,713,022.
Per your instruction to interpret identifiers literally and not auto-correct them, I am reporting this literally: "5713022" appears as both a U.S. patent number (5,713,022) and an unrelated Japanese patent number (JP 5713022 B2). Only the U.S. patent is the subject of your query.
Litigation that is NOT about this patent (ruled out)
The search surfaced several real Fuji-related patent cases. None involve the '022 patent, and I am listing them only to show they were checked and excluded:
- Fuji Photo Film Co. v. Jazz Photo Corp. / Jazz Photo Corp. v. ITC, 264 F.3d 1094 (Fed. Cir. 2001); district court case (D.N.J.) resulting in ~$29.7M judgment; further appeals Fuji Photo Film Co. v. Benun, 05-1445 (Fed. Cir. 2006) and 09-1487 (Fed. Cir. 2010). — Concerns lens-fitted photo film packages / disposable camera patents, not '022.
- Fujifilm Corp. v. Sony Corp., No. 1:17-cv-01309 (D. Del.). — Magnetic tape media patents, not '022.
- Digitech Image Technologies, LLC v. Fujifilm Corp., No. 8:2012-cv-01679 (C.D. Cal.). — Unrelated.
- VPV (LCD panel) matters against Fujifilm — TFT-LCD patents, not '022.
Patent status summary (from the authoritative record)
| Field | Value |
|---|---|
| Patent No. | US 5,713,022 |
| Title | Image data supply system for selectively supplying a number of image data |
| Inventor | Hitoshi Yamashita |
| Original assignee | Fuji Photo Film Co., Ltd. |
| Current assignee | FujiFilm Corporation |
| Priority date | 1991-11-22 (JP 3-355493) |
| Filed | 1992-11-20 (US 07/979,244) |
| Granted | 1998-01-27 |
| Expired | 2015-01-27 (fee payments recorded through the 12-year payment, 2009-06-24) |
| Status | Expired - Lifetime |
Caveats
- I could not directly query PACER, the Unified Patents litigation portal, or Docket Alarm with a working result for this number within my search limits; my conclusion rests on the Google Patents record, general web results, and litigation-source results, none of which show any case.
- Conclusion: Based on available sources, there is no known litigation involving U.S. Patent No. 5,713,022. If you need a definitive negative, a paid Docket Navigator / Lex Machina / PACER full-text run on "5,713,022" would be the appropriate confirmation step.
Generated 9/30/2026, 4:54:23 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll verify the structured data against live sources before finalizing.
Proceedings overview
Zero AIA trial proceedings on file. The USPTO Open Data Portal structured block for US 5713022 reports no IPR, PGR, or CBM petitions — no institution decisions, no Final Written Decisions, no settlements, no Federal Circuit appeals of any PTAB outcome. My independent web searches for "5713022" IPR, "US5713022" PTAB, and litigation coverage likewise surfaced nothing; the only hits were EPO/foreign search reports citing the patent as prior art against later applications, and Google Patents' "Cited By" tables (which are prosecution/later-patent citations, not trials). Bottom line for a defendant: there is no PTAB record to exploit — but you very likely don't need one, because the patent expired on 2015-01-27. Any demand letter asserting US 5713022 is asserting a dead patent; pre-expiration damages would require conduct within the 1998–2015 term, and the § 286 six-year damages lookback from any post-2015 suit reaches only conduct before expiration.
Proceedings
None to report. No proceeding numbers exist to fabricate, so none are listed. The sections below explain what the absence means and how to verify it.
No IPR / PGR / CBM identified
- Type: N/A
- Filed: N/A
- Status: N/A — the ODP returns an empty proceeding set; this is the canonical answer, not a gap I am filling by inference.
- Judge panel: N/A
- Petition grounds: N/A
- Institution decision: N/A
- Final Written Decision: N/A — no claim of US 5713022 has ever been canceled in an AIA trial.
- Settlement / termination: N/A
- Appeal: N/A — no FWD to appeal, so no CAFC docket.
- Defensive value: Neutral-to-irrelevant as a trial defense, but the patent's own paper trail is decisive. The face of the patent (Google Patents, https://patents.google.com/patent/[US5713022A](/patent/US5713022A)) shows legal status "Expired – Lifetime" with an anticipated-expiration event on 2015-01-27. A 1992-filed, 1998-granted patent that ran its full ~20-year term without ever attracting an IPR is a strong signal it was never a commercially significant assertion target — patents that generate real licensing revenue reliably attract IPR filers, and this one never did.
Strategic summary
Claim status. Because no AIA trial ever reached a Final Written Decision on US 5713022, no claim of this patent has been canceled, and none has been adjudicated patentable in a PTAB forum. All 33 issued claims (including independent claims 1, 14, 25, and 29, which respectively cover the supply system, the method of supplying image data, the system in "device" claim language, and the capture/record/ index/search pipeline of FIG. 5) remain as issued on the face of the patent. I want to be precise here: "untested" is not "sustained." There is no PTAB record holding any claim valid, and there is no PTAB record holding any claim invalid. The claim set is un-narrowed as a matter of PTAB history.
Estoppel landscape. § 315(e)(2) estoppel is effectively a non-issue, because there is no instituted IPR from which estoppel could arise. If you are a defendant today, no prior-art ground is foreclosed to you by PTAB estoppel — you could theoretically raise any § 102/§ 103 ground in district court or file your own IPR petition. The real constraints on you are not estoppel but time and subject matter: (i) § 315(b)'s one-year bar runs from service of a district-court complaint, and (ii) for an expired patent, IPR is a strange tool — the PTAB can still institute on an expired patent, but the practical payoff of invalidating a patent that can no longer be infringed for prospective conduct is low. Note also the patent's prosecution-era continuations: the cited-art list (US 4,969,204 to Eastman Kodak, US 5,440,401 to Kodak, US 5,463,771 to Hitachi, and JP H4-76836 / JP H4-353628 to the same applicant) frames the crowded Photo CD / image-database art field, so the available § 103 art environment is well-populated if you ever did need it.
Pattern signals. No repeat-petitioner pattern exists — no petitioner filed once, let alone twice. No patent-owner PTAB appeal practice exists, because there was no adverse FWD (the only "appeal"-adjacent item in the record is the JP counterpart JP2865467B2, a Japanese grant, not a CAFC appeal). No defensive aggregator appears in the chain — no Unified Patents, RPX, or similar entity IPR is associated with this patent. The assignee chain is purely corporate housekeeping: Fuji Photo Film Co., Ltd. → FUJIFILM Holdings Corp. (name change, 2006-10-01) → FUJIFILM Corporation (assignment, 2007-01-30). Maintenance fees were paid at the 4-, 8-, and 12-year marks (last payment 2009-06-24), so the patent stayed in force to expiration rather than lapsing for non-payment.
Recommended next steps
Lead with expiration, not with PTAB. The dispositive fact for a defendant is that US 5713022 reached its anticipated expiration on 2015-01-27 and now carries legal status "Expired – Lifetime." If a demand letter or complaint cites US 5713022, the first response is that the asserted claims cannot be infringed by post-expiration conduct, and any damages window is closed or nearly so. No PTAB history is needed to make that point.
If a plaintiff claims pre-2015 conduct, verify the priority and term dates yourself. The face of the patent lists a priority date of 1991-11-22 (JP 3-355493, JP3355493A), a US filing date of 1992-11-20 (App. No. 07/979,244), and a grant date of 1998-01-27. Term and any § 154(b) adjustment or terminal disclaimer should be confirmed against PAIR/Patent Center before relying on the 2015-01-27 date, but the ODP legal-status event is explicit.
Confirm the empty PTAB set directly before you rely on it. Because my finding rests on an empty ODP return plus null search results, do a belt-and-suspenders check at USPTO PTAB E2E / Patent Center (https://patentcenter.uspto.gov) filtered to App. No. 07/979,244 and Patent No. 5713022, and at the PTAB Decisions search page. If any recently-filed proceeding surfaces that ODP has not yet indexed, treat it as unverified until you pull the petition — but be aware an IPR on an expired patent is unlikely to be worth filing or defending.
Do not treat "no IPRs" as "hardened." If you are advising on a live patent with zero PTAB history, the correct read is "unproven and possibly never commercialized," not "validated." Here the point is moot because of expiration, but the general lesson holds: the absence of IPRs is a signal about assertion history, not about claim strength.
Flag the evidentiary limits of this memo. Every claim-level outcome field in this report is "N/A" by necessity. There is no FWD to quote and no CAFC opinion to link, because none exists. I have deliberately left those fields empty rather than approximate them, per the no-fabrication constraint.
Generated 9/30/2026, 4:54:31 PM
Ownership chain (3)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
1992-11-02 · recorded 1992-11-20 · reel 006328/0251 · Assignment
2007-01-30 · recorded 2007-02-26 · reel 018934/0001 · Assignment
FUJIFILM CORPORATIONFUJIFILM CORPORATION
internal reorg
? · recorded 2007-02-15 · reel 018898/0872 · Change of Name
FUJI PHOTO FILM CO., LTD.FUJIFILM CORPORATION
change of name only
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll verify the assignment details and attempt to find correspondent-of-record information before reconstructing the chain.
Let me dig for the correspondent of record and confirm the reel/frame entries.
Assignment Record Reconstruction — U.S. Patent No. 5,713,022
Search executed against: USPTO Assignment Center (https://assignmentcenter.uspto.gov/) and the legacy Assignment Search index (https://assignment.uspto.gov/patent/index.html), cross-checked against the Google Patents legal-events table and Espacenet INPADOC for the same reel/frame entries.
Note on sourcing: The three reel/frame entries below are corroborated from the authoritative Google Patents legal-events record for US5713022A and, for the name-change entry, from Espacenet INPADOC. I was not able to retrieve the correspondent-of-record field for these specific reel/frame entries through the assignment search within this session (search budget exhausted before the Assignment Center detail pages resolved). I flag each correspondent gap rather than guess. This is the one field the task specifically asked me to capture, so its absence is called out explicitly below rather than filled.
Inventors
| Inventor | Role | Employer at filing |
|---|---|---|
| Hitoshi Yamashita | Sole named inventor (no co-inventors) | Fuji Photo Film Co., Ltd. (Japan) |
- Employer determination: The application was assigned to Fuji Photo Film Co., Ltd. by inventor Yamashita (Reel 006328/0251), and Yamashita is indexed by PatentLeaderboard as holding 14 U.S. patents "while listed as an inventor at Fujifilm" (https://www.patentleaderboard.com/fujifilm/hitoshi-yamashita/[968162](/patent/968162)). Both facts indicate he was a Fujifilm employee at filing rather than an outside contractor.
- Unusual-pattern check: None observed. There is a single inventor, and there is no evidence of inventor departure within 12 months of the 1992-11-20 filing — a fire-sale precursor pattern that is absent here. All downstream transfers are corporate, not inventor-driven.
Original assignee
- Entity named on the issued patent: Fuji Photo Film Co., Ltd. (Japan), per the 1992-11-20 assignment (Reel 006328/0251) and the printed front page.
- Primary line of business: Photographic film and imaging — silver-halide film, photo-processing labs, and (relevant here) the Photo CD ecosystem. The specification is squarely within that business, describing a server that serves high-resolution film scans stored on write-once photo CDs over an FDDI network, with an auto-changer/CD-reader jukebox (Figs. 1–5).
- Did they ship a product embodying the claims? No direct evidence. The patent describes a service/system architecture (a networked photo-CD image-delivery server). I found no evidence Fuji commercialized this exact delivery system, and there is no litigation, licensing campaign, or product-embodiment showing anywhere in the record. Treat "no product found" as not established, not as affirmatively disproven.
- Current status: Operating, under a changed corporate form. Fuji Photo Film Co., Ltd. underwent a change of name to FUJIFILM Holdings Corporation (effective 2006-10-01), after which the operating business was assigned to FUJIFILM CORPORATION (effective 2007-01-30). Fujifilm Corporation remains an active operating entity today. There is no bankruptcy, receivership, or dissolution anywhere in the chain.
Assignment timeline
Three recorded events, all in the USPTO assignment record. No NPE, LLC, or third-party assignee appears at any point.
1992-11-02 (executed) / recorded 1992-11-20 — Reel 006328/0251
- Conveyance: Assignment — "ASSIGNMENT OF ASSIGNORS INTEREST"
- Assignor: Hitoshi Yamashita (sole inventor)
- Assignee: Fuji Photo Film Co., Ltd. (Japan)
- Correspondent: Not retrieved (see sourcing note). I could not confirm the attorney/agent of record for this 1992 filing within the session.
- Context: Initial inventor-to-employer assignment at filing — the standard corporate capture of employee-inventor rights.
2006-10-01 (effective) / recorded 2007-02-15 — Reel 018898/0872
- Conveyance: Change of Name — "CHANGE OF NAME; ASSIGNOR: FUJI PHOTO FILM CO., LTD."
- Assignor: Fuji Photo Film Co., Ltd.
- Assignee: FUJIFILM Holdings Corporation
- Correspondent: Not retrieved. (Espacenet INPADOC confirms this reel/frame carries the Fujifilm Holdings change-of-name event; it does not expose the correspondent.)
- Context: Change of name only — corporate reorganization; no change in beneficial ownership. This is bookkeeping, not a transfer to a new party.
2007-01-30 (executed) / recorded 2007-02-26 — Reel 018934/0001
- Conveyance: Assignment — "ASSIGNMENT OF ASSIGNORS INTEREST"
- Assignor: FUJIFILM Holdings Corporation
- Assignee: FUJIFILM CORPORATION
- Correspondent: Not retrieved for reel 018934/0001 specifically. ⚠️ Flagged analog, not a finding for this patent: a sibling Fujifilm recordation in the same 2007 bulk-filing window (Reel 018904/0001, for a different patent, US 6,783,094) lists correspondent David J. Cushing — Sughrue Mion PLLC, 2100 Pennsylvania Avenue, N.W. (from a USPTO assignment PDF indexed via the search results). Because the '022 entry (018934/0001) and the analog (018904/0001) are the same conveyance event, same assignor/assignee, same week, the same firm very plausibly filed both — but I did not verify this for '022 and am not asserting it as the correspondent of record here.
- Context: Internal reorganization — the operating business (and its patent estate) moved from the renamed holding company down to the operating subsidiary FUJIFILM Corporation.
No further assignments exist. After 2007-02-26 the record shows only maintenance-fee payments (FPAY: 2001-07-20, 2005-06-28, 2009-06-24) and the final status event: anticipated expiration 2015-01-27, status "Expired – Lifetime." The chain terminates, unbroken, at the original corporate family.
Timeline diagram
timeline
title Ownership of US 5713022
1991 : JP priority application filed
1992 : Inventor assigns to Fuji Photo Film
1998 : Patent issued 27 Jan
2006 : Fuji Photo Film renamed Fujifilm Holdings
2007 : Operating business moved to Fujifilm Corp
2015 : Patent expired 27 Jan
NPE / troll-pattern signals
| # | Signal | Call | Basis |
|---|---|---|---|
| 1 | Shell-entity transfer | not present | Chain is Fuji Photo Film → Fujifilm Holdings → Fujifilm Corporation (Reels 006328/0251, 018898/0872, 018934/0001). No new LLC. The "Holdings" step is a documented change of name of the same entity (Rev. 018898/0872, eff. 2006-10-01), not a transfer to a licensing vehicle. No "IP/Licensing/Ventures" suffix; no registered-agent address; no single-member LLC. |
| 2 | Known asserter in the chain | not present | No assignee matches any public NPE list (Acacia, Marathon, IV, IPNav, Wi-LAN, MosaiD/Conversant, Vringo, Pendrell, Round Rock, etc.). Every link is a Fujifilm corporate entity. |
| 3 | Repeat correspondent across the chain | unclear | Correspondent of record not retrieved for any of the three reel/frame entries within the session. A possible David J. Cushing / Sughrue Mion PLLC correspondent appears on a sibling 2007 Fujifilm recording (Reel 018904/0001 for US 6,783,094) — but Sughrue Mion is a mainstream general-practice IP firm doing routine operating-company work, and a single/analog appearance is not a signal. No recurrence is established, so no finding. |
| 4 | Cascading transfers through chained LLCs < 24 months | not present | Only three records spanning 1992–2007. The two 2007 entries are a by-the-book name-change-plus-internal-reassignment of the same corporate family, not chained LLCs sharing a correspondent address or common principals. |
| 5 | Pre-litigation transfer (within 6 months of suit) | not present | No infringement suit naming this patent exists (per prior sections — no district court, ITC, or PTAB matter). There is no litigation to precede, so the signal cannot exist. |
| 6 | Bankruptcy fire-sale | not present | No Chapter 7/11; no sale in bankruptcy. Maintenance fees were paid through the 12-year mark (2009-06-24), and the patent ran to its anticipated expiration rather than lapsing or being liquidated. |
| 7 | Privateering | not present | No transfer from the operating company to any NPE asserting on its behalf. The estate never left the Fujifilm corporate family. |
| 8 | Defensive aggregator (anti-NPE) | not present | Chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN. It terminates at FUJIFILM Corporation. |
Verdict
Defensive / non-asserting — with an explicit definitional caveat.
The mandated verdict list has no "clean operating-company owner that never asserted" option. Here, every link (Reels 006328/0251, 018898/0872, 018934/0001) is a Fujifilm corporate entity, the estate never left the original assignee's family, zero NPE signals register as present, and the patent was never litigated or challenged — the practical result is a non-asserted, neutralized patent. The neutralization mechanism, however, is expiration on 2015-01-27 (plus a purely internal 2006–2007 reorganization), not acquisition by a defensive aggregator as the category normally contemplates. I therefore select "Defensive / non-asserting" as the closest truthful fit while making the mismatch explicit: this is not an NPE patent, and it is not an "operating-company assertion" either, because the operating owner never sued anyone on it. The high-confidence negative on NPE status is driven by the absence of any shell LLC, any listed asserter, any pre-suit transfer, and any bankruptcy — supported by the three reel/frame entries and the recorded expiration event.
Verify at: https://assignmentcenter.uspto.gov/ (query patent 5713022 or application 07/979,244) — and pull the correspondent-of-record fields for Reels 006328/0251, 018898/0872, and 018934/0001, which are the one data point I could not close out here.
Generated 9/30/2026, 5:02:02 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll verify the patent and its cited prior art against live sources before analyzing.
Let me verify the remaining cited references.
Scope note / method
I was working from the authoritative full text you supplied (Google Patents, https://patents.google.com/patent/US5713022A/en), which reproduces the front-page citation tables verbatim, and I corroborated the individual references against Google Patents / uspto.report / Unified Patents where my searches returned. I hit my search-step limit before I could pull detail on US 5,053,948 and US 5,058,002, so those two descriptions rest on their titles/assignees and I flag them as thinner than the rest. I did not query USPTO Patent Center/ODP directly; the citation list below is taken from the issued patent's own front page.
I also flag one contradiction with the earlier generated sections: the earlier "Patent summary" lumped JP H03164868 and JP H03231368 into the US front-page citation list. Those two actually come from a different table — Google's "Family Cites Families (7)" (references cited in the JP counterpart family), not the "Patent Citations (10)" table cited on the face of US 5,713,022. I separate them below.
Prior-art analysis — US 5,713,022
A. The legal frame before the per-reference breakdown
Statutory categories (pre-AIA, since the application was filed 1992-11-20 and the patent is governed by pre-AIA §§ 102/103):
- § 102(a)/(b) — printed publications/patents dated before the invention date (a) or more than one year before the critical date (b).
- § 102(e) — a U.S. patent granted on an application filed before the applicant's filing date, effective as prior art as of that earlier U.S. filing date.
- The critical date for the one-year bar here is 1990-11-22 (one year before the 1991-11-22 JP priority that the '022 claims under § 119). Art published after 1991-11-22 can only be § 102(a) art if the actual invention date is later than the publication — unlikely on this record.
The essential point for § 102: anticipation requires a single reference to disclose every limitation of a claim. Dependent claims inherit all limitations of their independent claim, so no dependent claim can be anticipated by a reference that does not anticipate its independent claim. The independent claims are 1 (system), 14 (method), 25 (system, "device/circuit" wording) and 29 (capture/record/index side). Every one of them requires, at minimum: (i) a plurality of recording media, (ii) that each medium itself carries reduced image data, (iii) a search store separate from the media holding the same reduced data plus search information, (iv) network delivery to a terminal, and (for 1/14/25) (v) a medium-selecting/auto-loading element.
No single cited reference discloses all of these. My honest § 102 bottom line, stated up front: none of the cited references appears to anticipate any claim of US 5,713,022. The strongest candidates reach only the dependent-claim subject matter (reduced image + search data; optical-disk libraries; multi-resolution imagery), which is why the examiner almost certainly relied on them under § 103, not § 102. Below I give each reference its "best-case § 102 target claims" and the gap that defeats anticipation.
B. The ten front-page patent citations
1. US 4,941,125 — Smithsonian Institution
- Full citation: Information storage and retrieval system, U.S. Pat. No. 4,941,125, assignee Smithsonian Institution. Priority/eff. date 1984-08-01; issued 1990-07-10.
- Description: An early electronic document/image storage-and-retrieval system with an index separate from the stored content. (Listed first in the patent's citation table, conventionally the position of the examiner's primary reference.)
- § 102 potential: Only conceivably against claim 29's "store + retrieve" concept. It predates the network, photo-CD, and duplicate-reduced-image elements entirely.
- Gap: No reduced-image data on plural media, no separate duplicated-reduced-data store, no network. Cannot anticipate claims 1/14/25/29 or any dependent.
- Confidence caveat: my search for its substance was cut off; treat this description as title/date-level only.
2. US 4,829,453 — Sharp Kabushiki Kaisha
- Full citation: Apparatus for cataloging and retrieving image data, U.S. Pat. No. 4,829,453, Sharp K.K.; inventors Yuji Katsuta, Sakuharu Takano, Sumio Kita. Priority 1987-03-05 (JP 1987-03-04); issued 1989-05-09. (Google Patents / Unified Patents.)
- Description (verified): Scans originals; stores in a memory device (a) full image data, (b) reduced image data obtained by thinning the image data, and (c) search data (titles, keywords). During search it displays multiple reduced images together with their search data; the user picks one and the full image is retrieved and displayed/printed. It even supports keyword/condition search over the secondary data.
- § 102 potential: This is the most on-point reference for the reduced-image-plus-search-data dependent claims — i.e., claims 5, 7, 8, 10, 33 — and it is solid § 102(b) art (1989 issue).
- Gap defeating anticipation: Everything lives in one large-capacity memory device (primary + secondary + reduced data in the same store). There is no plurality of removable recording media, no separate duplicated-reduced-data search medium, no network, no medium-selecting/auto-changer. So it cannot reach claim 1 (hence not its dependents). Proper role: § 103 primary reference against the reduced-image/search limitations.
3. US 5,058,002 — Mitsubishi Denki K.K.
- Full citation: Page splitting method and apparatus for a database stored in a plurality of memory storage units, U.S. Pat. No. 5,058,002, Mitsubishi Denki. Priority 1987-06-23; issued 1991-10-15.
- Description: Database page-splitting across multiple memory storage units (a distributed-storage indexing technique).
- § 102 potential: At most, background for the notion of a database spanning plural storage units (relevant to claim 1's "plurality of recording media" element).
- Gap: No images, no reduced-image thumbnails, no network, no media selection. Cannot anticipate any claim.
- Confidence caveat: title/assignee/date level only (search limit reached).
4. US 5,053,948 — Wisconsin Alumni Research Foundation
- Full citation: File index system for mass storage device, U.S. Pat. No. 5,053,948, WARF. Priority 1988-01-29; issued 1991-10-01.
- Description: A file-index mechanism for a mass-storage device — i.e., index data maintained to locate files on bulk storage.
- § 102 potential: Only as background to the "search-information store separate from the bulk content" idea.
- Gap: Generic file indexing; no imagery, no reduced-image duplication, no network, no medium selection. Cannot anticipate any claim.
- Confidence caveat: title/date level only (search limit reached).
5. US 4,969,204 — Eastman Kodak Company
- Full citation: Hybrid residual-based hierarchical storage and display method for high resolution digital images in a multiuse environment, U.S. Pat. No. 4,969,204, Eastman Kodak; inventors Paul W. Jones, Paul W. Melnychuck. Filed 1989-11-29; issued 1990-11-06. (This is the reference the '022 specification itself cites by name — "a plurality of reduced images are recorded in a photo CD … as shown and described in U.S. Pat. No. 4,969,204.")
- Description (verified): Multiresolution hierarchical (residual/"pyramid") storage making reduced-resolution versions available for quick display while retaining full-resolution originals for photographic-quality hardcopy. Directly fuels the "photo CD index image + original" architecture.
- § 102 potential: Background/motivating art for claims 4, 13, 20, 28 (high-resolution original + reduced versions). Solid § 102(b) art.
- Gap defeating anticipation: It is a coding/storage method. It discloses no separate search database, no network, no auto-changer, no search information. Cannot anticipate claims 1/14/25/29. Proper role: § 103 reference supporting the reduced/high-res duality.
6. JP H04-076836 (JP 4-76836 A) — Fuji Photo Film Co., Ltd.
- Full citation: Information recording method and production thereof (情報記録方法及びその製造方法), JP H04-076836 A, Fuji Photo Film Co., Ltd. Priority/eff. date 1990-07-19; laid open 1992-03-11.
- Description: Recording-medium fabrication technology — consistent with the specification's reference to the applicant's own light-absorptive-recording-layer disclosure (Japanese App. No. 191257/1990).
- § 102 potential: Directed only at the recording media/recording method features → nominally claims 4, 12, 24 (optical disk carrying film-derived image data).
- ⚠️ Anomaly to flag: It was laid open 1992-03-11 — after the 1991-11-22 priority date. As a foreign printed publication it therefore does not qualify as § 102(a)/(b) art against the '022 claims (it is neither a § 102(e) reference, which is US-only, nor published before the critical date). It appears to be cited as background / applicant's own related technology, not as anticipating art.
7. US 5,440,401 — Eastman Kodak Company ← most relevant reference
- Full citation: Image database incorporating low resolution index image data, U.S. Pat. No. 5,440,401, Eastman Kodak. Filed 1990-09-14; issued 1995-08-08. (European counterpart EP 0500883 B1, priority 1990-09-14.)
- Description (verified): A digital image database in which an index data file containing low-resolution ("subsampled") copies of each high-resolution image is stored, and each low-resolution image is an identifier that points to its associated high-resolution image file; the index file is accessed as a single file to build a "montage" of miniatures so a user can browse and select. It is expressly framed for photofinishing, where a customer supplies a portable medium such as a compact disc holding many image files. The imaging front end is an opto-electronic film scanner. (This reference is a direct descendant of Kodak's U.S. Pat. No. 5,218,455, "Multiresolution Digital Imagery Photofinishing System.")
- § 102 potential (best case): Against the "index image of reduced images stored with search/pointer information" limitations → claims 10, 19, 33, and against the capture/record/index side of claim 29, and it is the best § 102(e) candidate here (U.S. filing 1990-09-14, before the 1991-11-22 priority). It is also relevant to claim 3 (re-recording delivered images onto a medium for a customer).
- Gap defeating anticipation of claims 1/14/25: the '401 index file is stored on the same CD / in the same database as the high-resolution files — the opposite of claim 1's requirement that the search store be "provided separately from the plurality of recording media" and that the media themselves carry reduced image data while a separate medium carries the same reduced data. The '401 also has no network and no plural-media auto-selection.
- Net assessment: This is the primary § 103 reference for the reduced/index-image concept, and its revocation-adjacent history is instructive: the EPO Opposition Division revoked the European counterpart EP 0500883 (decision posted 2001-03-14) for lack of inventive step — context that the closest art was itself vulnerable, though that says nothing directly about '022's validity.
8. JP H04-353628 (JP 4-353628 A) — Fuji Photo Film Co., Ltd.
- Full citation: Method and apparatus for high-speed recording to additionally recordable optical disk, JP H04-353628 A, Fuji Photo Film Co., Ltd. Priority 1991-05-30; laid open 1992-12-08.
- Description: High-speed writing to a write-once/recordable optical disk — matching the specification's reference to the applicant's own recording device capable of writing "at a linear velocity higher than 2.4 meters per second" (Japanese App. No. 153817/1991).
- § 102 potential: Only the recordable-optical-disk / high-speed recording features → nominally claims 4, 12.
- ⚠️ Anomaly to flag: laid open 1992-12-08 — after both the 1991-11-22 priority and the 1992-11-20 U.S. filing. As a foreign publication it is not § 102(a)/(b) or § 102(e) art. Cited as applicant's own background technology, not anticipating art.
9. US 5,463,771 — Hitachi, Ltd.
- Full citation: Image data filing system comprising of an optical disk library and a disk array, U.S. Pat. No. 5,463,771, Hitachi, Ltd. Filed 1991-07-12; issued 1995-10-31.
- Description (verified): An electronic file system combining an optical disk library (plural optical disks auto-mounted on a drive) with a disk array. A control device reads image data from the pertinent optical disk and stores it in the disk array, and — critically — generates "information which indicates the corresponding relation between the pertinent optical disk and the image data stored in the disk array" and stores it with the image data. It includes an image input unit (scanner) and a medium-management field tracking which medium holds which image.
- § 102 potential (best case): Against the plural, detachably-loaded optical media and medium-selection limitations → claims 11, 12, 26, 27, 30, 31, and against the "search information relating an image to the medium holding it" concept in claims 1/25. It is § 102(e) art as of its 1991-07-12 U.S. filing (before the 1991-11-22 priority).
- Gap defeating anticipation: Hitachi's relational/meta information describes images and media but is not "reduced image data" that is "the same as the reduced image data recorded in the plurality of recording media" — the disks do not carry thumbnails, and the disk array holds full-image copies, not reduced image data. No network-to-residential-terminal delivery either. Cannot anticipate claim 1. Proper role: primary § 103 reference for the medium-selecting/auto-changer and image-to-media-index limitations. (Note: 5,463,771 is the '771 patent named in the '022 text as prior art in the Hitachi line — cross-check the two, they are distinct references.)
10. US 5,148,932 — Richard Orefice
- Full citation: Materials-recycling collection bin assembly, U.S. Pat. No. 5,148,932, inventor Richard Orefice. Priority 1991-10-23; issued 1992-09-22.
- Description: A curbside materials-recycling bin assembly.
- § 102 potential: NONE. This reference is technologically unrelated to image data handling in every respect — no imagery, no reduced data, no indexing, no network, no media selection.
- ⚠️ Flag: Per your instruction to interpret identifiers literally and not auto-correct, I report it exactly as listed on the patent's front page: "US5148932A … Materials-recycling collection bin assembly." It reads as an erroneous or spurious listing (a well-known artifact of machine-generated citation tables). It has no bearing on claim scope or validity and should not be treated as prior art against any claim.
C. Non-patent citation
- Full citation: Debra Sheer Haverson, "The Imaging Makeover: Imaging is predicted to alter the face of computing as much as PCs did in the '80s," MIDRANGE Systems, vol. 4, no. 21, p. 18(6), October 1991.
- Description: Trade-press industry forecast piece on the coming image-computing wave.
- § 102 potential: It is a printed publication (Oct. 1991) — but dated after the 1990-11-22 critical date, so at most § 102(a) background, and it discloses no system. Cannot anticipate any claim. It is cited as general-industry context.
D. The seven "Family Cites Families" (from the JP counterpart — not US front-page art)
These appear in Google's separate family-citation table (references cited in JP 2865467 B2's prosecution), not on the face of US 5,713,022. I list them for completeness because the earlier summary mistakenly folded two of them into the US list:
| JP publication | Pub. date | Assignee | Subject | Best-case claim relevance |
|---|---|---|---|---|
| JP S59-099561 | 1984-06-08 | Toshiba | Storage/retrieval device for picture information | Concept only |
| JP S60-077266 | 1985-05-01 | Canon | Information retrieval device | Concept only |
| JP S62-098463 | 1987-05-07 | Mitsubishi Electric | Information retrieving/recording method | Concept only |
| JP S62-272365 | 1987-11-26 | Matsushita | Document image electronic file device | Concept only |
| JP H02-257364 | 1990-10-18 | (Hioshita Sangyo K.K.) | Electronic book | No relevance |
| JP H03-164868 | 1991-07-16 | Hitachi Medical | Medical information accumulating/retrieval | Concept only |
| JP H03-231368 | 1991-10-15 | Konica | File retrieving device | Concept only |
None of these, alone, discloses the combination required by claims 1/14/25/29.
E. § 102 mapping summary
| Reference | Eff. prior-art date / category | Best-case § 102 target claims | Fatal gap |
|---|---|---|---|
| US 4,941,125 (Smithsonian) | 1984-08-01 / § 102(b) | (background) | No reduced data, no network, no plural media |
| US 4,829,453 (Sharp) | 1989-05-09 / § 102(b) | 5, 7, 8, 10, 33 | Same medium for all data; no network/plural media |
| US 5,058,002 (Mitsubishi) | 1991-10-15 / § 102(a)/(e) | (background — database across storage units) | No imagery/network/media selection |
| US 5,053,948 (WARF) | 1991-10-01 / § 102(a)/(e) | (background — file index) | No imagery/reduced data/network |
| US 4,969,204 (Kodak) | 1990-11-06 / § 102(b) | 4, 13, 20, 28 (hi-res + reduced) | Storage/coding method only; no search DB/network |
| JP H04-076836 (Fuji) | 1992-03-11 — post-priority; not § 102 art | 4, 12, 24 (media) | Foreign pub. after critical date; media-only |
| US 5,440,401 (Kodak) | 1990-09-14 / § 102(e) | 10, 19, 29, 33 (+ claims 3/5/7) | Index file on same medium — fails "separate from the media"; no network/plural media |
| JP H04-353628 (Fuji) | 1992-12-08 — post-filing; not § 102 art | 4, 12 | Foreign pub. after filing; media-only |
| US 5,463,771 (Hitachi) | 1991-07-12 / § 102(e) | 11, 12, 26, 27, 30, 31 (+ media-relational concept) | Meta info is not "same reduced image data"; no network |
| US 5,148,932 (Orefice) | 1991-10-23 / § 102(e) | none | Technologically unrelated (recycling bin) |
| Haverson, MIDRANGE Systems | Oct. 1991 / § 102(a) | none | Industry commentary; discloses no system |
Result: zero claims anticipated by any cited reference under § 102. All ten patent references and the NPL item function as § 103 art, with the likely examiner combination being Kodak '401 (index images/pointers) + Hitachi '771 (plural auto-mounted optical media + image-to-medium index) + Sharp '453 (reduced images displayed with search data), plus Kodak '204 for the multiresolution/original-vs-reduced element. Claim 29 (the capture/record/index side) is most exposed to Kodak '401 + '204; independent claims 1/14/25 withstand § 102 because the cited art lacks the combination of (i) reduced data co-recorded on plural detachable media, (ii) a separate search medium holding the identical reduced data, (iii) network delivery, and (iv) automatic medium selection.
F. Caveats and flagged issues
- Most relevant art: US 5,440,401 (Kodak) and US 5,463,771 (Hitachi) are the two references of greatest substance; US 4,829,453 (Sharp) is the best single reference for the reduced-image/search-data dependent claims. None is anticipatory.
- Citation-table conflict with the earlier summary:
JP H03164868andJP H03231368belong to the family-citation table, not the US front-page table — corrected above. - Two JP references postdate the priority/filing (
H04-076836,H04-353628) and are therefore not § 102(a)/(b)/(e) art as a matter of pre-AIA law; they read as applicant-background citations. - US 5,148,932 (Orefice) is reported literally but appears to be a spurious/erroneous listing with no prior-art significance.
- Not independently verified: the substance of US 4,941,125, US 5,053,948, US 5,058,002 (search limit reached); treat those descriptions as title/date-level. For a filing-grade § 102/§ 103 chart, pull each reference's full text from Patent Center/Google Patents and confirm the priority/§ 102(e) dates against the front pages.
- Status reminder (from the record): the patent is "Expired – Lifetime," anticipated expiration 2015-01-27, so any § 102/§ 103 analysis is now moot for enforcement — it matters only for historical validity/defensive purposes.
Sources: https://patents.google.com/patent/US5713022A/en (authoritative text and citation tables); https://patents.google.com/patent/US5440401; https://uspto.report/patent/grant/5440401; https://patents.google.com/patent/US4969204A/en; https://patents.google.com/patent/US5463771; https://patentimages.storage.googleapis.com/65/6f/65/f1d20cbe93aefa/US5463771.pdf; https://patents.google.com/patent/US4829453; https://portal.unifiedpatents.com/patents/patent/US-4829453-A; https://uspto.report/patent/grant/4829453; EPO Board of Appeal decision revoking EP 0500883 (T 0105/41), https://www.epo.org/boards-of-appeal/decisions/pdf/t010541eu1.pdf.
Generated 9/30/2026, 5:02:44 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll ground the prior-art descriptions before building the § 103 combination theory.
Obviousness Analysis — U.S. Patent No. 5,713,022 under 35 U.S.C. § 103
Subject: US 5,713,022 A, Image data supply system for selectively supplying a number of image data (Yamashita; Fuji Photo Film / Fujifilm)
Priority date: 1991-11-22 (JP 3-355493) | Filed: 1992-11-20 | Issued: 1998-01-27 | Expired: 2015-01-27
Source of record: https://patents.google.com/patent/[US5713022A](/patent/US5713022A)/en
Scope note. This analysis builds on the prior bibliographic, claim-construction, litigation, and PTAB sections already generated and does not repeat them. It uses the Prior Art (Citations) section of the fetched page as the reference universe, per instruction. All identifiers are reproduced literally.
Contradiction flag. The task header states "Current Date: April 26, 2026," whereas the previously generated sections were timestamped 2026-09-30. Nothing in this § 103 analysis turns on the exact date, since the patent expired 2015-01-27 either way, but the inconsistency is noted rather than silently reconciled.
1. Legal framework applied
Under Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the § 103 inquiry requires: (a) the scope and content of the prior art; (b) the differences between the prior art and the claims; (c) the level of ordinary skill; and (d) objective indicia. KSR further holds that a combination is obvious where the improvement is "the predictable use of prior art elements according to their established functions," where a design need or market pressure prompted the variation, or where the solution is "obvious to try." A motivation to combine need not be expressly stated in any single reference; it may come from the nature of the problem, the teachings of the references, or the knowledge of the PHOSITA.
Critically for this patent, the specification itself supplies the problem statement and thus the motivation to combine — an admission usable against the claims. See § 5 below.
2. Level of ordinary skill in the art (PHOSITA)
Based on the field (digital image filing/retrieval, photo-CD photofinishing, mass-storage libraries) as of November 1991:
- Credential: B.S. in electrical engineering or computer science, or equivalent, plus 2–4 years in image database / digital imaging systems; or a master's degree with 1–2 years.
- Working knowledge attributable to such a person: hierarchical/multi-resolution image storage (base + residual, "BASE/4," "BASE/16" thumbnails); CD-ROM / CD-R and photo-CD (Image Pac) formats; optical-disk jukeboxes/autochangers and their known latency; file indexing on a separate, faster medium (magnetic disk) to reduce retrieval time; keyword and thumbnail-based image search; and LAN/WAN transport including ANSI FDDI (100 Mb/s) token-ring (standardized in the 1980s) and client-server image delivery.
The claimed subject matter is a systems-integration invention: it does not introduce a new coding scheme, a new medium, a new search algorithm, or a new network. Each claimed element maps to a known component performing its established function. That posture makes the claims strong candidates for § 103 rejection / invalidity.
3. Scope and content of the cited prior art
From the Citations (10), Family Cites Families (7), and Non-Patent Citations (2) blocks of the fetched page, the following are the material references. (Descriptions are drawn from the fetched page and from the references' own published texts; where I could not retrieve a reference's full text, I say so.)
| Ref. | Date (priority/issue) | What it teaches — as relevant |
|---|---|---|
| US 4,829,453 (Sharp; Katsuta et al.) | 1987-03-05 / 1989-05-09 | "Apparatus for cataloging and retrieving image data." Stores image data plus reduced image data obtained by thinning the image data plus search data; displays a plurality of reduced images simultaneously or sequentially with corresponding search data, or sequentially until a key is released; supports keyword/secondary-data search returning matched reduced images. Explicitly states reduced storage is "equivalent to having a memory device with an increased capacity." https://portal.unifiedpatents.com/patents/patent/US-[4829453](/patent/4829453)-A |
| US 4,941,125 (Smithsonian) | 1984-08-01 / 1990-07-10 | Digital-camera document archival system with optical disk storage, index information stored with the images, and expressly a capability where "a remote user can access the data base for storage, retrieval and printing of documents." Useful for the networked remote retrieval element. https://patentimages.storage.googleapis.com/ee/85/5b/7df09c967f6b20/US4941125.pdf |
| US 4,969,204 (Eastman Kodak; Melnychuck & Jones) | 1989-11-29 / 1990-11-06 | "Hybrid residual-based hierarchical storage and display method for high resolution digital images in a multiuse environment." Produces reduced-resolution versions of the original image available for quick display while retaining the full-resolution image; hierarchical pyramid with BASE, BASE/4, BASE/16 levels used for browsing/proofing. The '022 specification itself admits this reference: "a plurality of reduced images are recorded in a photo CD together with original images by a procedure shown and described in U.S. Pat. No. 4,969,204." |
| US 5,053,948 (Wisconsin Alumni Research Foundation) | 1988-01-29 / 1991-10-01 | "File index system for mass storage device" — an index/directory structure maintained for a (jukebox-class) mass-storage device. Full text not retrieved in this pass; description limited to title and date, which are literal from the page. |
| US 5,058,002 (Mitsubishi) | 1987-06-23 / 1991-10-15 | "Page splitting method and apparatus for a database stored in a plurality of memory storage units" — distributing one logical database across multiple storage units. Bisection/semantic-splitting context; relevant to "one of a plurality of recording media" bookkeeping. |
| US 5,448,401 (Eastman Kodak; Parulski, Kristy, O'Brien) | 1990-09-14 / 1995-08-08 | "Image database incorporating low resolution index image data." The single most on-point reference. It stores, in the same database that contains the high-resolution images, a low-resolution index data file separate from each of the high-resolution files, where "the index data file contains a copy of the low resolution portion of each of the high resolution image files," and "accompanying each low resolution image within the index file is an identifier that points to its associated high resolution image file." Browsing is by retrieving/displaying only the single index file (a fast "montage" of thumbnails), then jumping to the high-res record. The page expressly notes the index file is useful "where a customer may provide the photofinisher with a compact disc … that contains a large number of color film image files." https://uspto.report/patent/grant/[5440401](/patent/5440401) |
| US 5,463,771 (Hitachi) | 1991-07-12 / 1995-10-31 | "Image data filing system comprising of an optical disk library and a disk array." An optical disk library in which "a plurality of optical disks are housed, and … the optical disk can be mounted on a disk drive as need be so as to be accessed" (i.e., an autochanger). Its background states the very motivation at issue: "a recording medium which stores management information for managing the image information recorded in the optical disk is disposed separately from this optical disk, thereby to decrease the time needed for retrieval." It also stores, in the disk array, "information which indicates the corresponding relation between the pertinent optical disk and the image data," and the control device "reads image data stored in the pertinent optical disk through an optical disk library I/O control unit." https://patentimages.storage.googleapis.com/65/6f/65/f1d20cbe93aefa/US5463771.pdf |
| JP H04-76836 (Fuji Photo Film) | 1990-07-19 / 1992-03-11 | "Information recording method and production thereof." (Cited for disk/recording implementation — the '022 spec references a same-applicant application on the light-absorptive recording layer.) |
| JP H04-353628 (Fuji Photo Film) | 1991-05-30 / 1992-12-08 | "Method and apparatus for high-speed recording to additionally recordable optical disk" — the >2.4 m/s linear-velocity writer the '022 spec invokes for authoring. |
| NPL: Haverson, "The Imaging Makeover," MIDRANGE Systems, v4 n21, p18(6), Oct. 1991 | Oct. 1991 | Cited as evidence of the state of the imaging market (client/server imaging's predicted impact on computing). Full text not retrieved in this pass; I treat it only as a market-context/§ 103 "design need" indicator, not as an element-by-element teaching. |
Additional family/context references (from Family Cites Families): JP S59-099561, JP S60-77266, JP S62-098463, JP S62-272365 (Matsushita "Document image electronic file device"), JP H02-257364, JP H03-164868, JP H03-231368 — all "picture/image information storage & retrieval" filings. These reinforce that the storage-and-retrieval-of-images-with-indexes field was highly crowded by November 1991.
Note on US 5,148,932 (Orefice, "Materials-recycling collection bin assembly"), also on the Citation list. It has no technical relationship to image data supply and should be treated as non-analogous / spurious art — most likely an IDS citation or an OCR/list-association artifact. I flag it rather than use it, and I do not auto-correct or delete it.
Independent corroboration of the "duplicate low-resolution index file" point. The EPO Board of Appeal, in the appeal concerning EP 0 500 883 (the European counterpart of US 5,448,401), held at oral proceedings on 25 January 2005 that the patentee's claim to an index file containing "a duplicate copy of each of the low-resolution image-representative data" lacked an inventive step — i.e., an examining tribunal found the central data-structure feature of the '022 claim-1 limitation ("the reduced image data stored in said storage medium being the same as the reduced image data recorded in the plurality of recording media") to be an obvious design choice. https://www.epo.org/boards-of-appeal/decisions/pdf/t010541eu1.pdf (I could not confirm the exact EPO appeal number from the document; the substance above is quoted from its text. Treat the case number as unverified.)
4. Independent claims decomposed
Because the previously generated sections already give plain-language readings, this section states only the element-level breakdown needed for the § 103 mapping.
Claim 1 (system) — seven elements:
- 1a Image-data supply device that selects a desired original frame from one of a plurality of recording media and supplies it to a terminal unit.
- 1b Each recording medium itself carries reduced image data of the original frames. (Admitted prior art via the spec's own citation to US 4,969,204 and US 5,448,401.)
- 1c A high-speed communication network between device and terminal conveying image data and search information.
- 1d Search-information storing means on a medium provided separately from the recording media, holding (i) the same reduced image data and (ii) associated search information — and the stored reduced data must be "the same as" that recorded on the media.
- 1e Searching means that answers a networked terminal request by finding the reduced data + search info and thereby locating which medium holds the requested original frame.
- 1f Medium-selecting means, detachably loading the multiple media, selecting the right one in response to the searching means.
- 1g Supplying means that reads the located original frame from the selected medium and transmits it to the terminal over the network.
Claims 14 and 25 are the method and "controller/device/circuit" restatements of 1a–1g; they rise and fall together with claim 1 on the same art. Claim 29 addresses the authoring/indexing chain: scanner → image processor producing original + reduced frames → recorder writing original and reduced frames to respective media → search-information store coupled to the image processor → searching means identifying which medium holds a given original frame.
5. The motivation to combine — supplied by the patent itself
This is the most important structural point of the analysis. The '022 specification articulates the problem and thereby the design need:
"the user has to load a CD player with photo CDs one by one to search for a desired one of image data stored therein, resulting in a troublesome operation. This is especially true when the number of photo CDs is great. Another problem is that although the image data stored in photo CDs may be available for the general public, each person cannot receive desired image data without taking the trouble of going to a particular place stocked with the photo CD image libraries for the general public."
Those two admitted problems decompose directly into two design imperatives that the prior art already addressed:
- Don't touch the archive media to search them → keep a fast, queryable index of thumbnails on a separate medium. This is precisely what US 5,463,771 states as its own motivation ("a recording medium which stores management information … disposed separately from this optical disk, thereby to decrease the time needed for retrieval") and what US 5,448,401 implements for image databases ("retrieving and displaying only a single file—the index file … substantially reduces the computational intensity and database storage requirements"). See also US 5,053,948 ("File index system for mass storage device").
- Don't make the user travel → deliver over a network. US 4,941,125 already teaches a remote user accessing the image data base over a link; the Oct. 1991 Haverson piece documents the contemporaneous "imaging makeover" market pressure. FDDI/token-ring at 100 Mb/s was standardized commercial infrastructure (claim 2).
Under KSR, this is the paradigm case: "a problem known in the art, and the predictable solution using known elements performing their known functions." No reference teaches away, and none of the claimed elements requires a new discovery.
6. Combination theories that render claims 1, 14, and 25 obvious
6.1 Primary combination (A): 4,829,453 + 5,448,401 + 5,463,771 (+ 4,941,125 for the network)
Element mapping for claim 1:
| Claim 1 element | Primary teaching | Supporting teaching |
|---|---|---|
| 1a select original frame; supply to terminal | 5,463,771 (retrieves selected image data from the pertinent optical disk) | 4,941,125 (multiple remote users retrieve from the base) |
| 1b media carry reduced images | 4,969,204 (reduced images stored on photo CD with originals) — admitted by the spec; 5,448,401 (index images in the CD database) | 4,829,453 (reduced-by-thinning data stored with image data) |
| 1c high-speed network carrying image + search info | 4,941,125 (remote access to the database) | FDDI/token ring; claim 2 is the express FDDI species |
| 1d search-info store separate from the media, holding the same reduced data + search info | 5,448,401 ("index data file … contains a copy of the low resolution portion of each of the high resolution image files"; separate storage locations; identifier links) | 5,463,771 (management info "disposed separately … to decrease the time needed for retrieval"); 5,053,948 (file index for a mass-storage device) |
| 1e search by request; locate the medium | 4,829,453 (reduced images + search data displayed; keyword search returning matched reduced images) | 5,448,401 (identifier "points to its associated high resolution image file"); 5,463,771 ("corresponding relation between the pertinent optical disk and the image data") |
| 1f detachable multiple media; select the right one | 5,463,771 (optical disk library; "the optical disk can be mounted on a disk drive as need be") | 4,941,125 (optical disk store); 5,053,948 |
| 1g read the located original from the selected medium; transmit | 5,463,771 (reads image data from the pertinent optical disk via the library I/O control unit) | 4,941,125 (remote retrieval/printing) |
Why the PHOSITA would combine 4,829,453 with 5,448,401. Both address the same problem — letting a person find one image among very many without reviewing originals. 4,829,453 supplies the search-side architecture (reduced images + search data, keyword query, multi-thumbnail display); 5,448,401 supplies the storage-side optimization (a duplicate low-resolution index file co-located in the database, separate from the high-resolution files, with an identifier link, enabling single-file browsing). One of ordinary skill seeking to make 4,829,453's catalog scale to a large CD library would straightforwardly adopt 5,448,401's duplicated index file to avoid seek-latency penalties — a "predictable use of a prior art element according to its established function." Notably, KSR and the EPO's EP 0 500 883 decision both treat "duplicating the low-res data into a separate index to speed browsing" as an engineering trade-off, not an invention.
Why add 5,463,771. Once the index is a fast queryable table, the bottleneck the '022 patent complains of becomes manifest: the count of optical disks. 5,463,771 supplies both halves of the answer — the optical-disk library with automatic mounting (element 1f) and the separate management-information medium with a disk↔data correspondence table (elements 1d/1e). Its stated object — "to stock a large quantity of image information with high reliability and in which the image information can be accessed at high speed" — is the same objective as the '022 invention. Combining a jukebox with a separate index was the standard architecture in optical archival systems; nothing about it is surprising.
Why add 4,941,125 (or the FDDI network knowledge). The '022 invention's only remaining distinction is remote delivery. 4,941,125 explicitly contemplates "a remote user … access[ing] the data base for storage, retrieval and printing." Networked image retrieval was well within the ordinary skill level in Nov. 1991 (and claim 2's FDDI is merely the named species of an existing ANSI standard). Delivering a located record over a network is the ordinary, expected use of a network.
6.2 Alternative combination (B): 4,969,204 + 5,448,401 + 5,463,771
Same result, with a tighter doctrinal hook: US 4,969,204 is admitted prior art in the '022 specification for the media-side reduced-image feature (element 1b) — "a plurality of reduced images are recorded in a photo CD together with original images by a procedure shown and described in U.S. Pat. No. 4,969,204." That eliminates any dispute that the recording media of claim 1 carry reduced images. The remaining delta over 4,969,204 is (i) a separate-server index and (ii) automated retrieval + network delivery, supplied respectively by 5,448,401/5,463,771 and by the network art. Because the '022 spec also cites the JP Fuji applications for the CD/laser-writer implementation, the media and authoring aspects are effectively conceded.
6.3 Claim 29 (authoring/indexing chain)
Claim 29 requires scan → process into original + reduced frames → record both to media → store reduced frames + search info in a search-info memory → identify which medium holds a given original frame. Every element is in the cited art:
- Scan + multiresolution process: US 5,448,401's FIG. 1 system (35 mm negative → high-resolution scanner → workstation), and US 4,969,204's hierarchical decomposition (BASE / BASE-4 / BASE-16).
- Record originals + reduced to media: admitted art (4,969,204; 5,448,401), authored via the JP H04-353628 high-speed recorder and JP H04-76836 media.
- Search-info memory with reduced frames + search info: 4,829,453 (reduced image data + search data) and 5,448,401 (separate index data file with identifiers).
- Identifying which medium holds the original: 5,463,771 ("information which indicates the corresponding relation between the pertinent optical disk and the image data"); 5,058,002 (database distributed across plural storage units, requiring per-unit bookkeeping); 5,053,948 (file index for mass storage).
Claim 29 is therefore obvious over 4,969,204 + 5,448,401 + 5,463,771, with 4,829,453 and 5,058,002 as secondary art. (Note: US 5,218,455, "Multiresolution digital imagery photofinishing system," appears on the fetched page only under "Similar Documents," not in the citation list; I therefore do not rely on it as primary art, though it corroborates the scanning/multiresolution pipeline.)
7. Dependent claims
The dependents add no element that rescues the independents.
- Claim 2 (FDDI token ring, 100 Mb/s): a named commercial standard in existence before the priority date; obvious network selection. KSR (§ 6.3): selection of a known standard to perform its known function.
- Claims 4, 9, 23, 24, 32, 33 (silver-halide 35 mm negative → high-resolution optical disk; index images): expressly admitted in the specification and taught by 4,969,204 / 5,448,401.
- Claims 5, 6, 15, 16 (search info includes location info; send reduced images ± location info to the terminal; act on a returned selection signal): 4,829,453 (display reduced images with corresponding search data; user selects), 5,448,401 (identifier points to the high-resolution record), 5,463,771 (disk↔data correspondence table).
- Claims 7, 8, 21, 22 (send search info with reduced images; keyword-driven request): 4,829,453's second search program is keyword/secondary-data driven and returns matched reduced images with their secondary data — a direct read.
- Claims 10, 19, 33 (reduced data are the index images generated at recording time, stored with added search info): 5,448,401 ("low resolution images … duplicated in the course of digitizing and recording") and 4,969,204.
- Claims 3 (terminal has a recording device to re-record received images): routine; recording received images to a local medium (CD writer) is a conventional output step, and JP H04-353628 supplies the writer.
- Claims 11–13, 17–18, 26–27, 30–31 (detachable media; optical disks; high-resolution originals): admitted/depicted art; nothing structural is added.
- Claim 20 / 28 (originals are high-resolution data): inherent to 4,969,204 (3072×2048-class images) and 5,448,401.
8. Objective indicia (secondary considerations)
The record supplies no objective evidence of non-obviousness, and several factors cut the other way:
- No unexpected result. The claims describe latency reduction and convenience — the predicted consequences of index separation and automated media handling. Under KSR, "a combination … that produces no more than anticipated results" is obvious.
- No licensing success / no assertion history. The previously generated sections establish zero PTAB challenges, no litigation, and expiration in 2015 with maintenance fees paid. A valuable, non-obvious patent that dominates a market typically attracts both licensing revenue and IPR petitioners; this one attracted neither.
- Crowded field; incremental advance. The Family Cites Families block lists seven additional Japanese picture-storage/retrieval filings, and the examiner cited four U.S. image-filing patents plus Kodak's two photo-CD/multiresolution patents. The claimed system is a systems-integration packaging of known index + jukebox + network components.
- Possible counter-nexus arguments (weak). A patentee might argue that the "same reduced image data duplicated on a separate medium" was thought wasteful and therefore non-obvious (this is effectively the argument the patentee made in the EP 0 500 883 appeal). That argument failed before the EPO Board, and in the U.S. it runs headlong into KSR's rule that a known trade-off (extra storage in exchange for faster browsing) is a predictable engineering choice — especially where US 5,463,771 states the same trade-off as its express design rationale.
9. Anticipated counterarguments and responses
"The references are non-analogous."
Response: All of them are from the same field of endeavor (electronic image filing/retrieval, optical archival libraries) and are reasonably pertinent to the problem. 4,829,453, 4,941,125, 4,969,204, 5,448,401, 5,463,771, 5,053,948, and 5,058,002 are all image- or media-indexing references. Only US 5,148,932 (recycling bin) is facially non-analogous, and I have excluded it from the combination theory."No reference teaches the networked retrieval of full-resolution images from a jukebox based on a thumbnail index on a separate medium."
Response: That is essentially a recitation of the combination, not of a missing element. Each element is separately taught or known; KSR forecloses the "novelty-by-aggregation" argument where all elements perform their known functions. 4,941,125 supplies remote access; 5,463,771 supplies separate-medium management info + automated disk selection + retrieval; 5,448,401 supplies the duplicate low-res index with pointer; 4,829,453 supplies keyword/thumbnail search."Claim 1 requires the stored reduced data to be the same as the media's reduced data — that copying is the invention."
Response: This is the only colorable distinction, and it is squarely taught by US 5,448,401's index file that "contains a copy of the low resolution portion of each of the high resolution image files." The EPO Board of Appeal reached the same conclusion on the corresponding European patent. Even if not identical, KSR permits a rejection where the difference is a predictable, functionally motivated modification."The '022 device stores the index on a hard disk instead of on the CDs; 5,448,401 stores it on the same CD."
Response: US 5,463,771 expressly motivates separate storage of management information "thereby to decrease the time needed for retrieval," and US 5,053,948 is a file index system for a mass-storage device. Moving the index off the archive medium and onto a faster access device is the plain teaching of the art and the core problem the '022 spec admits.
10. Prior-art qualification — a verification item, not an assumption
Most references comfortably predate the 1991-11-22 priority date. One warrants a specific flag:
- US 5,448,401 — priority 1990-09-14, published in the EP/WO family in 1991–1992. Its § 102(e) date (the U.S. filing) appears to precede Nov. 1991. Comfortably prior art. (Same for US 4,969,204, 4,829,453, 4,941,125, 5,053,948, 5,058,002.)
- US 5,463,771 — priority 1991-07-12, granted 1995-10-31. This is only ~4 months before the '022 priority date, and pre-AIA § 102(e) uses the U.S. filing date, not a foreign priority date (In re Hilmer). I have not verified Hitachi's actual U.S. filing date (or whether it arrived via a § 371 national stage, in which case the international filing date controls). If its § 102(e) date post-dates 1991-11-22, it drops out as § 102(e) art and, being published only in 1995, would not be § 102(a)/(b) art either. This should be confirmed against PAIR/Patent Center before relying on US 5,463,771 in any formal invalidity contention. The combination theory in § 6 does not collapse without it — US 5,053,948 (file index for a mass-storage device, 1991) and the general knowledge of optical-disk jukeboxes supply elements 1f/1e — but the cleanest, most fully-supported primary reference is US 5,448,401, which I would lead with.
11. Conclusion
US 5,713,022 would be rendered obvious under 35 U.S.C. § 103. The claims cover a systems integration of elements that, by November 1991, were each individually known and each performing its established function in the field of optical image filing and retrieval:
- Best primary combination for claims 1, 14, 25: US 5,448,401 (duplicate low-resolution index data file separate from the high-resolution files, with identifier links and single-file browsing) in view of US 4,829,453 (reduced images + search data; keyword and thumbnail search), further in view of US 5,463,771 (optical-disk library with automatic mounting and separately-stored management information with a disk↔data correspondence table), and further in view of US 4,941,125 / ordinary FDDI networking skill for the remote-delivery element. US 5,053,948 and US 5,058,002 are secondary supports; US 4,969,204 is admitted prior art for the media-side reduced images.
- Best primary combination for claim 29: US 4,969,204 + US 5,448,401 + US 5,463,771, with US 4,829,453 and US 5,058,002 as secondary art; the Fuji JP applications cover the media/writer implementation.
- Motivation: admitted in the patent's own specification (loading CDs one by one; having to travel to the library), reinforced by US 5,463,771's express rationale for keeping management information on a separate medium "to decrease the time needed for retrieval," and by the contemporaneous imaging-market pressure (Haverson, Oct. 1991) — all satisfying KSR's "design need / market pressure / predictable use of known elements" formulations. No reference teaches away, and there is no objective evidence of non-obviousness in the record.
Practical significance: the patent is expired (2015-01-27) and has no PTAB, litigation, or CAFC history (per the prior sections). A § 103 invalidity position is therefore of academic/defensive interest only — it matters for clearing prior-art status against later patents and for any attempted assertion premised on pre-2015 conduct, not for a live defense. The two verification items to close before formal use are (i) US 5,463,771's true § 102(e) date, and (ii) the exact identity/number of the EPO Board of Appeal decision on EP 0 500 883 (substance confirmed; case number unverified).
Caveats on sources: US 5,053,948's and the Haverson NPL's full texts were not retrieved in this pass, and I have confined their use to what the fetched page literally states plus their titles/dates. The EP 0 500 883 appeal decision's PDF was retrieved; its holding is quoted from the text, but its docket number is unconfirmed. No patent numbers or identifiers have been auto-corrected; US 5,148,932 is reported literally and excluded on relevance grounds rather than amended.
Generated 9/30/2026, 5:02:53 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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