Invalidity dossier

US 10176848

Recording and reproducing apparatus and method thereof

Current assignee: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.

Added 9/28/2026, 6:44:31 PM

At a glanceNo PTAB challenges5 lawsuits on fileasserted by Samsung Electronics Co., Ltd. +1Software Technology & Computing Systems (T)

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Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

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US 10,176,848 B2 — Analyst Summary

Scope note: The full patent text you supplied (Google Patents, fetched 2026-09-28) is treated as authoritative for the bibliographic and claim content below. Litigation/PTAB items come from search results and are flagged where unconfirmed.


1. Bibliographic data

Field Value
Patent number US 10,176,848 B2 (application 14/478,020)
Title Recording and reproducing apparatus and method thereof
Inventor Mari Yoshida (Yokohama, JP) — sole named inventor
Assignee (current) Maxell, Ltd. (Kyoto, JP)
Original assignee / chain Hitachi Maxell, Ltd. → (assignment recorded 2018-01-25, executed 2017-10-01) Maxell, Ltd. → (2021-11-29 merger) Maxell Holdings, Ltd. → (2021-12-03 name change) Maxell, Ltd.
Filing date 2014-09-05
Issue date 2019-01-08
Priority JP 2008-130678, filed 2008-05-19
Continuity Continuation of Ser. No. 12/430,185 (filed 2009-04-27, now US 9,159,368)
Pre-grant publication US 2014/0376879 A1 (2014-12-25)
Claims / drawings 20 claims, 12 drawing sheets; independent claims appear to be 1, 8, 13, 18
Examiners Thai Q Tran (primary), Syed Hasan (assistant)
Agent Mattingly & Malur, PC (attorney docket ASA-9940-02)
Certificate of Correction Corrected Col. 15, Claim 8, line 62: delete "reproduce the recorded image from," insert "reproduce the recorded image information from"
Google Patents "anticipated expiration" 2029-04-27
Terminal disclaimer Patent states it is subject to a terminal disclaimer
Key CPC G11B 27/34; G11B 27/034; G06F 17/30852; G06K 9/00; G06K 9/00288; H04N 5/77; H04N 21/434; among others

2. Abstract (verbatim)

In a recording and reproducing apparatus and a recording and reproducing method for the recording and reproducing apparatus for recording and reproducing image information on a scene obtained through photographing, relative to a predetermined first recording medium and being capable of setting one or more chapters to each scene, a face recognizing process is executed for a photographed image based on the image information, an importance level of each chapter is set in accordance with a result of the face recognizing process for a very important person (VIP) set by a user, and each chapter having a relevant importance level among importance levels of respective chapters is selectively reproduced. A user can therefore find an object chapter and scene quickly and easily.


3. Plain-language overview of the independent claims

Claim 1 — Apparatus (photograph → record → face-recognize → selectively replay a designated person).
A recording/reproducing apparatus with:

  • a photographing unit generating video;
  • a recording unit writing the video to a medium;
  • a face-recognition processing unit that runs face recognition on the video;
  • a reproducing unit reading the video back;
  • a specific-person setting unit that operates in one of two setting modes:
  • first setting mode — the person is specified from a face recognized after the mode is set and before the video is recorded (i.e., you photograph/identify the person up front); and
  • second setting mode — the person is specified from a face already recorded in the medium and previously recognized by the face-recognition unit (i.e., pick a person from already-shot footage);
  • a control unit that selectively reproduces the recorded video containing the specified person, based on the face-recognition result.

Claim 8 — Processor/memory apparatus, same two-mode registration. Substantively parallel to claim 1, reciting a processor plus memory storing instructions to capture/record image information, run face recognition, reproduce from the medium, register a person as a "specific person" under either the first setting mode (person obtained by newly photographing them in a photographing mode, then registered) or the second setting mode (person selected from a plurality of faces in the already-recorded image information), and selectively reproduce the recorded image information that includes the registered specific person.

Claim 13 — "Pick out, then pick out again, then sequentially reproduce." Apparatus with photographing sensor, recorder, reproducer, and processing circuitry that: (i) runs face recognition; (ii) registers a specific person under the first or second setting mode (same definitions as above); (iii) firstly picks out image information containing the registered specific person; (iv) secondly picks out, from among that set, image information meeting a predetermined condition set by user instruction; and (v) controls the reproducer to selectively and sequentially reproduce the image information picked out under the predetermined condition.

Claim 18 — Single-mode (pre-registration) variant. Apparatus with photographing sensor, recorder, reproducer, and processing circuitry that runs face recognition, registers a specific person obtained by newly photographing the person in a photographing mode (only the "first setting mode" path — the two-mode selection is not recited), then picks out image information including that registered person, secondly picks out based on a predetermined condition, and reproduces selectively/sequentially.

⚠️ Uncertainty: the excerpt of the patent text you supplied is truncated inside claim 18 ("…secondly pick out the image information based on a predetermined condition from amo…"). The full text of claim 18 and claims 19–20 is not in the provided document, so my characterization of claim 18 is a reconstruction from the visible text plus the parallel claim 13 language. Claim 19 and 20 appear to be dependent claims, but I cannot quote them from the supplied text.

Claim scope observations (from the dependent claims that are fully present): claims 2–5 add a user interface with a specific-person setting mode / recording mode / reproducing mode, support for multiple specific persons, a display of recognized faces during recording mode, and selectable reproducing modes; claims 6–7 (and 11–12, 16–17) add a first/second/third reproducing mode hierarchy in which the shortest mode's content is a subset of the longer mode's content (the "superexpress / express / standard" playback concept from the specification).


4. Post-grant and litigation activity

USPTO / PTAB — patent-specific:

  • IPR2021-00367 — filed on/around 2020-12-23 challenging US 10,176,848; the Google Patents record shows it terminated in settlement. The petitioner is not identified in the material I retrieved, so I will not guess.
  • IPR2024-00867 — Samsung Electronics Co., Ltd. et al. v. Maxell, Ltd. Filed 2024-05-01; instituted 2024-11-07; Final Written Decision 2025-11-06 (panel: Kevin C. Trock writing, Terrence W. McMillin, Jason W. Melvin). Challenged claims are reported as 11, 12, 16, 17, 19, 20 plus one more that appears in the source as the string "84" — I treat that string as a source/formatting artifact (the patent has only 20 claims) and cannot state with confidence which additional claim(s) were challenged.
  • Outcome: the secondary source I found does not populate a "claims invalidated" field, and a Law360 headline dated 2026-04-28 states the PTAB "threw out all the claims Samsung challenged in a pair of Maxell video processing patents." Because the article is characterized by date and title only, and because "threw out" is ambiguous (petition rejected vs. claims invalidated), I flag the substantive FWD outcome as not authoritatively confirmed. The fact that Maxell is the appellant in the resulting CAFC appeal (below) suggests the FWD was at least partly adverse to Maxell, but I cannot confirm that inference.

CAFC 2026 dockets (as requested):

  • 26-1625 — Maxell Ltd. v. [Samsung Electronics Co. Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%20Ltd.) — CAFC, filed 2026-04-07, appeal from the PTAB, originating case IPR2024-00867 (i.e., the appeal of the '848 FWD). Status: pending, judge assignment not yet made; counsel of record reported as Robert G. Pluta, Mayer Brown (Mayer Brown has represented Maxell). This docket is listed on the Google Patents page for US 10,176,848.
  • 26-1111 — also listed as a CAFC case on the Google Patents page for this patent. I could not retrieve any docket detail for 26-1111 in the searches performed; I therefore cannot confirm its parties, origin, or subject matter, and I will not speculate.

District court / ITC (context, per the Google Patents record and press reporting):

  • Maxell, Ltd. v. Apple Inc., W.D. Tex. No. 6:20-cv-00646 (filed 2020-07-16) — '848 asserted among five patents; the accused feature was reported as the Photos "People" face-grouping album.
  • Maxell, Ltd. v. Samsung Electronics Co., Ltd., E.D. Tex. No. 5:23-cv-00092 (filed Sept. 2023) — '848 asserted among seven patents. A jury returned a verdict on 2025-05-28 finding infringement and willfulness of US 8,982,086, 10,176,848, and 11,017,815, totaling ≈ $111.7M (≈ $28.2M attributed to the '848 patent). In September 2025 Judge Robert W. Schroeder III granted JMOL for Samsung (noninfringement of all three tried patents, plus invalidity of two of them), vacating the award; Maxell appealed and reportedly moved to stay that appeal pending the PTAB proceedings.
  • Related/severed E.D. Tex. case 5:25-cv-00034; second Samsung case 5:25-cv-00052 (different patents).
  • ITC investigations referenced on the Google Patents page: 337-TA-1215 and (per press reporting) 337-TA-1432.

5. Explicit uncertainty statements

  • The supplied patent text is truncated at claim 18; claims 18 (full), 19, and 20 are not verifiable from the document provided.
  • The exact set of claims challenged in IPR2024-00867 is uncertain beyond 11, 12, 16, 17, 19, 20 (the "84" token is unexplained).
  • The substantive outcome of the IPR2024-00867 Final Written Decision and of CAFC 26-1625 could not be confirmed from a primary source.
  • CAFC docket 26-1111 — no details retrieved; treat as unverified.
  • The petitioner in IPR2021-00367 is not identified in the sources retrieved.
  • I did not obtain results for a direct USPTO Patent Center / Patent Public Search query on 10,176,848 within this session; the bibliographic data above is taken from the authoritative full text you supplied, cross-checked against PTAB and docket-aggregator exhibits that quote the same front-page data. No auto-correction of the number was applied — the number was interpreted literally as 10,176,848 throughout, and I excluded results for other Maxell patents in the same family (e.g., 9,159,368; 10,418,069; 11,094,350; 11,727,960; 11,948,605; 12,400,685) except where they were needed to explain continuity.

Generated 9/28/2026, 6:52:43 PM

Cases on file (5)

Group view →

Specific litigation cases in our database that name US patent 10176848. The free-form analysis below may also discuss cases beyond this list.

Lawsuits filed per year

2020: 1 case1'20'21'222023: 1 case'232024: 1 case'24
Cases asserting US 10176848, by filing year.

Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

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I'll search for litigation involving US patent 10,176,848 across the sources you mentioned.

Let me dig deeper into the specific cases — the ITC action, the Apple case, and the Federal Circuit appeals.

Known Litigation Involving U.S. Patent No. 10,176,848

Patent basics (for identification): U.S. 10,176,848 B2, "Recording and reproducing apparatus and method thereof," inventor Mari Yoshida, application 14/478,020 filed Sept. 5, 2014, granted Jan. 8, 2019, priority to JP 2008-130678 (May 19, 2008). Current owner: Maxell, Ltd. (Maxell Holdings, Ltd. → Maxell, Ltd.). A Certificate of Correction issued and there is a reexamination certificate of record.

I found several matters in which the '848 patent was asserted or challenged. Below, each is separated by forum.


1. District Court — Maxell, Ltd. v. Apple Inc.

  • Court / Jurisdiction: U.S. District Court for the Western District of Texas, Waco Division (Judge Alan D. Albright)
  • Case No.: 6:20-cv-00646
  • Filed: July 16, 2020
  • Plaintiff: Maxell, Ltd.
  • Defendant: Apple Inc.
  • Patents asserted: U.S. 7,203,517; 8,982,086; 7,199,821; 10,129,590; and 10,176,848 ('848 patent)
  • Outcome/Status: Case terminated April 1, 2021 — joint motion to dismiss granted; all claims dismissed with prejudice (Dkt. 17–18, signed by Judge Albright). The action had been stayed pending the parallel ITC action under 28 U.S.C. § 1659.
  • Sources: Docket Alarm, Maxell, Ltd. v. Apple Inc., 6:20-cv-00646; Patexia docket 139605.

2. ITC — Certain Mobile Electronic Devices and Laptop Computers

  • Forum: U.S. International Trade Commission, Section 337 Investigation No. 337-TA-1215
  • Complaint filed: July 17, 2020; instituted Aug. 24, 2020 (85 FR 52153-54)
  • Complainant: Maxell, Ltd. (Japan)
  • Respondent: Apple Inc. (Cupertino, CA)
  • Patents asserted: U.S. 7,203,517; 8,982,086; 7,199,821; 10,129,590; and 10,176,848
  • Outcome/Status as to the '848 patent: Terminated. Maxell moved to withdraw the '848 allegations (Feb. 5, 2021); ALJ issued an ID (Order No. 9) granting the unopposed motion; the Commission determined not to review on Feb. 24, 2021, terminating the '848 patent from the investigation.
  • Sources: ITC Notice, 337-TA-1215 (Feb. 24, 2021); Federal Register 2020-18537.

3. District Court — Maxell, Ltd. v. Samsung Electronics Co., Ltd. et al.

  • Court / Jurisdiction: U.S. District Court for the Eastern District of Texas, Texarkana Division (Judge Robert W. Schroeder, III)
  • Case No.: 5:23-cv-00092
  • Filed: September 2023
  • Plaintiff: Maxell, Ltd.
  • Defendants: [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd. and Samsung Electronics America, Inc.
  • Patents asserted: seven patents, including 10,176,848 (with 8,073,161; 8,982,086; 10,129,590; 11,017,815; 11,223,757; 11,445,241). Accused products included Samsung smartphones, tablets, SmartThings devices, and home appliances.
  • Trial / Verdict: Trial began May 19, 2025 on the '086, '848, and '815 patents. On May 28, 2025, the jury returned a unanimous verdict that Samsung willfully infringed claim 1 of the '086 patent, claims 11 and 12 of the '848 patent, and claims 1, 21, and 24 of the '815 patent, awarding roughly $111.7M total (about $28.2M attributable to the '848 patent).
  • Post-trial: On Sept. 18, 2025, Judge Schroeder granted Samsung judgment as a matter of law (JMOL), overturning the verdict — JMOL of noninfringement as to all three tried patents (including the '848 patent) and invalidity as to two of them. (The court's reasoning was filed under seal.) Judgment of noninfringement was also entered pretrial (summary judgment) on the '590 and '757 patents.
  • Current status: On appeal (see #4). Related matters were severed/added: '241-patent claims severed into 5:25-cv-00034; a second Samsung case filed as 5:25-cv-00052 (ten different patents, not including the '848 patent). ITC action 337-TA-1432 (filed Dec. 2024) does not involve the '848 patent.
  • Sources: E.D. Tex. Dkt. 351, 390, 401; RPX/Mondaq, "Maxell's $112M Verdict Against Samsung Falls in Posttrial Challenge" (Sept. 22, 2025); Bloomberg Law; Lawtimes (Korea).

4. Court of Appeals — Maxell, Ltd. v. Samsung Electronics Co., Ltd. (Fed. Cir.)

  • Case No.: 2026-1111
  • Filed: October 29, 2025
  • Court: U.S. Court of Appeals for the Federal Circuit
  • Parties: Appellant Maxell, Ltd.; Appellees Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
  • Nature: Maxell's appeal from the E.D. Tex. JMOL in 5:23-cv-00092 (i.e., the appeal that topples the $112M/'848 verdict).
  • Status (as of the most recent docket retrieved April 10, 2026): Maxell filed its corrected opening brief March 24, 2026; Samsung's response brief deadline extended to June 26, 2026. Still pending. (Note: reports indicate Maxell asked the Federal Circuit to stay this appeal pending related PTAB proceedings.)
  • Source: Justia Dockets, Fed. Cir. 26-1111.

5. PTAB — Samsung Electronics Co., Ltd. et al. v. Maxell, Ltd. (IPR of the '848 patent)

  • Case No.: IPR2024-00867
  • Petitioner: Samsung Electronics Co., Ltd. (and Samsung Electronics America, Inc.)
  • Patent Owner: Maxell, Ltd.
  • Filed: May 1, 2024
  • Institution decision: Nov. 7, 2024
  • Final Written Decision: Nov. 6, 2025
  • Status: Final Written Decision issued; appealed to the Federal Circuit as Appeal No. 2026-1625.
  • Claims involved: Challenge directed to claims of the '848 patent (reported as claims 11, 12, 16, 17, 19, 20 — one aggregator also lists "84," which appears to be a data artifact and not a real claim number; treat with caution).
  • Sources: PTAB/Unified Patents IPR2024-00867 portal; Patexia litigation summary (id 198930).

6. Earlier PTAB proceeding — IPR2021-00367

  • Google Patents lists this IPR (identified as filed and Settlement) under the '848 patent's litigation family. I could not independently confirm from my searches which specific claims/patent-of-record it targeted, so treat the linkage to the '848 patent as probable but not fully verified.

Notes / caveats

  • Do not confuse the '848 patent with other "848" designations that appeared in search results: the Olink/Alamar matter involves U.S. 7,883,848; the Roku/Anonymous Media IPRs (IPR2024-01054, -01057, -01350) involve U.S. 8,510,768 and U.S. 10,719,848. None of these is U.S. 10,176,848.
  • Reexamination: Ex parte reexamination activity on the '848 patent is referenced in the IPR record (Ex. 1002 = Reexamination Certificate; Ex. 1004 = reexamination file history). A complaint-analysis summary suggests the reexaminations were instigated by Apple as a competitor. I could not independently verify the Apple-instigation detail or the reexam outcome, so I flag it as not fully confirmed.
  • Federal Circuit 26-1625 vs. 26-1111: both appear on the Google Patents "litigation" list for this patent family — 26-1111 is the district-court JMOL appeal; 26-1625 is the appeal from the IPR2024-00867 Final Written Decision.
  • Where I have stated an outcome, it is grounded in the cited docket/agency sources above; anything not so grounded I have expressly flagged as unverified. For the authoritative current docket status, PACER (E.D. Tex., W.D. Tex.), the Federal Circuit docket, and the USPTO PTAB/PatentCenter records should be checked directly, since filings continue to evolve (most recent docket activity I located is dated April 2026).

Generated 9/28/2026, 6:52:36 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.

Current assignee: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.

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.

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I'll research the PTAB proceedings associated with this patent. Let me start with targeted searches.

Let me dig deeper into the specifics of each proceeding.

Good — I've identified two proceedings. Now let me pin down the claim-level outcomes and the appeal.

Proceedings overview

Caution up front on the data source: the structured "PTAB proceedings on file" block in this prompt contains no proceedings from the USPTO Open Data Portal, yet the patent's own Google Patents litigation metadata lists two PTAB cases — IPR2021-00367 (Settlement) and IPR2024-00867 (Final Written Decision) — and both are independently corroborated by public filings (Docket Alarm, PTAB E2E, Patexia, law-firm/industry coverage). I am treating the two as the operative count and flagging the ODP gap rather than defaulting to "no activity."

Bottom line: US 10,176,848 has been through one merits IPR that ended in a Final Written Decision holding the challenged claims unpatentable and is now on appeal (Fed. Cir. No. 2026-1625), plus one earlier Apple IPR that was settled away pre-institution and left no estoppel — one claims-invalidated proceeding (on appeal), one settled proceeding, zero institution denials, zero claims confirmed as patentable in any FWD I can verify; the patent is therefore narrowed and under appeal, not "hardened," and the parallel E.D. Tex. case has already produced JMOL of noninfringement on the '848.


IPR2024-00867 — Samsung Electronics Co., Ltd. & [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) v. Maxell, Ltd.

  • Type: Inter Partes Review (35 U.S.C. §§ 311–319)
  • Filed: 2024-05-01
  • Status: "Final Written Decision - Appealed" (Google Patents: "PTAB case IPR2024-00867 filed (Final Written Decision)"). Plain English: trial ran to a merits decision, the Board invalidated challenged claims, and the case is now on appeal — so the cancellation is not yet final in the Article III sense, but the claims stand canceled at the USPTO unless the Federal Circuit reverses.
  • Judge panel: Kevin C. Trock (writing), Terrence W. McMillin, Jason W. Melvin
  • Petition grounds: Challenged claims 11, 12, 16, 17, 19, 20, and 84 (the POPR quotes this identical set: "claims 11, 12, 16, 17, 19, 20, and 84"). Claim 84 is not one of the 20 issued claims printed on the face of the patent and appears to be a reexamination-added claim — Samsung's Exhibit 1002 is the "'848 reexamination certificate" and Exhibit 1004 is the reexamination file history. Grounds were § 103 obviousness:
    • Ground 1: Nozaki (WO 2007/060980) in view of Haitani (US 9,665,597) — directed to claims 11–12, 16–17, 19–20;
    • Ground 2/3: Nozaki + Haitani + secondary references Graham (US 2004/0095376) and Kim (KR 2007/0017068A);
    • Ground 3 (as briefed in Maxell's sur-reply): Nozaki + Haitani + Graham against claim 84.
    • Other record exhibits: Bederson declaration (Ex. 1005), Wactlar (US 5,835,667, Ex. 1014), plus UIST/InfoVis/IJHCI thumbnail-and-zoom-UI literature (Exs. 1010–1013, 1015).
  • Institution decision: Instituted 2024-11-07. The Board declined both discretionary-denial theories:
    • § 314(a) / Fintiv: "Given that the language of Petitioner's stipulation substantively tracks the stipulation language set out in the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution."
    • § 325(d) / Advanced Bionics: Maxell argued Nozaki and Haitani were already before the Office (Nozaki in prosecution and reexam; Haitani in reexam; Graham and Kim cumulative), but the Board proceeded past Part 1/Part 2 and instituted.
    • Maxell responded with a Request for Director Review of the Institution Decision (2024-11-21) arguing the Board "abused its discretion by applying an incorrect standard for discretionary denial under 35 U.S.C. § 325(d)" and "devaluing the reexamination process." I cannot confirm the Director's disposition from the available record; the fact that trial ran to a 2025-11-06 FWD shows the request did not halt the proceeding.
  • Final Written Decision: 2025-11-06 (authored by Judge Trock) — issued one day inside the § 316(a)(11) one-year statutory deadline running from the 2024-11-07 institution date.
    • Claim-level granularity — I could not verify this from the sources I retrieved and I will not fabricate it. Patexia's docket summary lists the challenged set and carries a "Claims Invalidated:" field that returned empty/truncated in my retrieval. The strongest indirect evidence is Samsung's own later PTAB briefing (filed in IPR2025-01307–01316, Fall 2025), which states that in the first wave the PTAB "instituted all seven petitions and recently issued final written decisions in several, finding unpatentable all but two claims asserted in the district court trial," and then identifies those two survivors as claims 21 and 24 of U.S. Patent No. 11,223,757 (the '757 patent), not the '848. Combined with Maxell appealing, the inference is that the '848 claims Samsung challenged did not survive — but that is an inference from third-party briefing, not a quote from the '848 FWD. Pull Paper 33+ (FWD) in IPR2024-00867 from PTAB E2E before relying on any specific claim number.
    • Note also that Maxell's own sur-reply in this IPR references limitations styled as claims 8, 13, and 18 (e.g., "[8.i] of Claim 8," "[13h]–[13j]," "[18g]–[18i]"), which may reflect dependency/appendix labeling rather than an expanded challenge — another reason to read the FWD directly.
  • Settlement / termination: None. This proceeding ran to a Final Written Decision.
  • Appeal: Reviewed to the Federal Circuit — Appeal No. 2026-1625 (per Patexia "Status: Final Written Decision - Appealed; Appeal 2026-1625"; Google Patents' litigation block also lists a CAFC case at .../26-1625, plus a second CAFC case at .../26-1111 in this family). I could not confirm which party appealed or the issues on appeal. Whether Samsung appeals a partial loss on any surviving claim or Maxell appeals the invalidation materially changes the strategic read, so check the 2026-1625 docket (CourtListener / Federal Circuit) directly.
  • Defensive value: This is the single most valuable proceeding for a defendant: an instituted IPR on the '848 that ended in a merits invalidation of the challenged claims and is now on appeal. Unless and until the Federal Circuit reverses, the Board's cancellation of those claims is the presumptive posture, and § 315(e)(2) estoppel now binds Samsung and its privies/RPIs. Separately, Maxell's Request for Director Review and the concurrent reexamination of a continuation (Samsung's briefing alleges Maxell "withholding critical information from both the PTAB and a Patent Office examiner," citing 37 C.F.R. § 1.56) are inequitable-conduct/§ 1.56 hooks worth developing, though they are allegations, not findings.

IPR2021-00367 — Apple Inc. v. Maxell, Ltd.

  • Type: Inter Partes Review (35 U.S.C. §§ 311–319)
  • Filed: 2020-12-23
  • Status: "Settlement" — terminated before institution. Google Patents: "PTAB case IPR2021-00367 filed (Settlement)."
  • Judge panel: Michael R. Zecher (writing the termination decision, Paper 9), Jason W. Melvin, Frederick C. Laney
  • Petition grounds: Challenged claims 8, 10–13, and 15–20 of US 10,176,848. (For contrast, Apple's companion petition, IPR2021-00362, challenged claims 1–4 of US 8,982,086, and IPR2021-00400 challenged claims 1–10 of US 10,129,590.) Art in the record includes Beek et al., US 2005/0063566 A1 (Ex. 1011). I could not retrieve the full ground-by-ground statement of the Apple petition — treat the art list as incomplete.
  • Institution decision: None issued. Maxell never filed a Preliminary Response, and the Board never decided whether to institute.
  • Final Written Decision: None. No merits ruling on any claim.
  • Settlement / termination: Terminated 2021-04-09 on the parties' Joint Motion to Terminate under 37 C.F.R. § 42.72, filed 2021-04-08, in parallel with IPR2021-00362 and IPR2021-00400. The Board found "the parties 'have entered into a written confidential settlement agreement that fully resolves' their disputes regarding the involved patents," dismissed all three Petitions without rendering any further decisions, and granted the request under 35 U.S.C. § 317(b) / 37 C.F.R. § 42.74(c) to keep the settlement agreement (Ex. 1026) business confidential and separate from the patent file. Terms are confidential. The parties represented that related ITC and W.D. Tex. proceedings had been dismissed.
  • Appeal: None.
  • Defensive value: Very little directly — but usefully, no estoppel attaches. Because the proceeding was dismissed before institution, Apple and its privies are not subject to § 315(e)(1) or § 315(e)(2), and the record is frozen at the petition stage. The takeaway for a current defendant is that claims 8 and 10–13 and 15–20 (including independent claim 8) have never been tested on the merits at the PTAB — the Apple art set is a starting point, not a resolved question.

Strategic summary

Which claims are canceled vs. sustained vs. untested. On the record I can verify: the '848 issued with 20 claims (independents include claims 1, 8, 13, and 18, the last of which is truncated in the published text), and there is a reexamination certificate adding at least claim 84. In IPR2024-00867 the Board challenged-then-invalidated claims 11, 12, 16, 17, 19, 20, and 84 — the FWD issued 2025-11-06 and is on appeal, and third-party briefing from the parallel Samsung IPR wave represents that the Board invalidated everything asserted at trial except claims 21 and 24 of the '757 patent (a different patent). I cannot state as a verified fact that every one of claims 11, 12, 16, 17, 19, 20, 84 was canceled — get the FWD. What is clear is that independent claim 1 was never challenged by either petitioner, and claims 1–7, 9, 10, 13, 14, 18 and any non-84 reexam claims are untested on the merits at the PTAB (claims 8, 10–13, 15–20 were only named in Apple's settled 2021 petition). That asymmetry matters: a defendant accused under claim 1 faces a claim with no PTAB history at all.

Estoppel landscape. Two very different estoppel postures:

  • Samsung (IPR2024-00867): § 315(e)(2) estoppel now applies to Samsung and its real parties in interest/privies as of the 2025-11-06 FWD — they may not assert in district court any ground raised or that reasonably could have been raised, i.e., the Nozaki/Haitani/Graham/Kim obviousness combinations and the thumbnail-UI literature are off the table for them.
  • Apple (IPR2021-00367): no estoppel at all (dismissed pre-institution under § 42.72). Apple's art (e.g., Beek, US 2005/0063566) is not estoppel-tainted and remains available to any defendant who was not a privy of Samsung.
  • For a new, unrelated defendant, no petition-based estoppel runs against you; the Nozaki/Haitani/Graham combination is also not barred as to you, but re-running it invites a § 325(d) fight, and the Board has already rejected the "same art was before the Office" argument once (institution decision, 2024-11-07). The more productive framing is to adopt the FWD's reasoning and, where the FWD is on appeal, coordinate timing. Non-art defenses — § 101, § 112, inequitable conduct (Maxell's alleged § 1.56 violations in the '848 continuation prosecution), and the E.D. Tex. noninfringement JMOL — are entirely unaffected by § 315(e).

Pattern signals. Two different petitioners across two eras (Apple 2021, Samsung 2024) — no single-petitioner serial-filer pattern on this patent. Unified Patents appears only as the licensor of the Google Patents litigation dataset, not as a filer on the '848; there is no defensive-aggregator petition in the chain I can identify. Maxell is an aggressive, well-resourced enforcer (Apple settlement; a $43.3M ZTE verdict; E.D. Tex. suits against Samsung and Lenovo/Motorola; ITC 337-TA-1215 and 337-TA-1432; UPC actions), and it has been litigating the PTAB aggressively — a Request for Director Review of the '848 institution decision and a Federal Circuit appeal (2026-1625). The district-court overlay is now strongly pro-defendant: in September 2025 the E.D. Tex. court granted JMOL for Samsung, wiping out a ~$112M May 2025 verdict — including JMOL of noninfringement on the '848 and invalidity JMOL on two of the three tried patents — and Maxell has asked the Federal Circuit to stay its own appeal pending the PTAB proceedings. That is a patent owner in retreat on multiple fronts.

Recommended next steps

  1. Retrieve the IPR2024-00867 Final Written Decision (Paper 33+) from PTAB E2E before you rely on any claim-specific statement — verify the exact disposition for each of claims 11, 12, 16, 17, 19, 20, and 84, and whether any claim was sustained. The Google Patents page for the patent links the case at https://portal.unifiedpatents.com/ptab/case/IPR2024-00867; the docket with exhibits and papers is at https://www.docketalarm.com/cases/PTAB/IPR2024-00867/Samsung_Electronics_Co._Ltd_v._Maxell_Ltd/.
  2. Pull the Federal Circuit docket for Appeal No. 2026-1625 (and identify the second CAFC case, 26-1111) to determine which party appealed, which claims are at issue, and whether the appeal has been stayed pending the PTAB activity — Maxell's stay requests in the parallel district-court appeal are a live signal.
  3. Quote the settlement disposition from Apple's case if you need to show the pre-institution posture: the Board's 2021-04-09 decision (Paper 9, IPR2021-00362/-00367/-00400) is at https://www.docketalarm.com/cases/PTAB/IPR2021-00362/Apple_Inc._v._Maxell_Ltd/docs/04-09-2021-Board/Settlement_Before_Institution-9-Settlement_Prior_to_Institution_of_TrialCFR_sec_4274.pdf.
  4. On timing: the '848 trial was instituted 2024-11-07 under a statutory one-year deadline and the FWD issued 2025-11-06 — there are no pending PTAB milestones left in IPR2024-00867; the only open clock is the Federal Circuit appeal. If you are weighing a new IPR on claims 1–7, 9, 10, 13, 14, or 18 (all PTAB-untested), budget for a § 325(d)/§ 314(a) discretionary-denial fight and note the ITC/§ 315(a)(1) bars as applicable.
  5. Do not treat the invalidation as final. Because the FWD is on appeal, the claims are canceled at the Office but not finally adjudicated. If your demand-letter posture depends on claims 11, 12, 16, 17, 19, 20, or 84 being dead, say "canceled by the Board, on appeal at No. 2026-1625" rather than "invalid."

Generated 9/28/2026, 6:53:17 PM

Ownership chain (6)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. 2017-10-01 · recorded 2018-01-25 · reel 045142/0208 · Assignment

    Hitachi Maxell, Ltd.Maxell, Ltd.

    Correspondent: Nadeen Nsouli

    transfer-to-monetization

  2. ? · recorded 2021-11-29 · reel 058255/0579 · Merger

    Maxell, Ltd.Maxell, Ltd.

    internal reorg

  3. ? · recorded 2021-12-03 · reel 058666/0407 · Change of Name

    Maxell, Ltd.Maxell, Ltd.

    change of name only

  4. ? · reel 022596/0595 · Assignment

    Yoshida, MariHitachi, Ltd.

  5. ? · reel 030622/0001 · Assignment

    Hitachi, Ltd.Hitachi Consumer Electronics Co., Ltd.

    internal reorg

  6. ? · reel 033685/0883 · Assignment

    Hitachi Consumer Electronics Co., Ltd.Hitachi Maxell, Ltd.

    internal reorg

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.

✓ Generated

I'll reconstruct the assignment record from USPTO Assignment Center and cross-check with secondary sources. Let me run several targeted searches.

Found the chain-of-title reels. Let me pin down the correspondents, execution dates, and confirm the later links apply to this patent.

Assignment Record Reconstruction — US 10,176,848 B2

Source note (read first): I could not directly query the Assignment Center index page for this patent number in this session. The ownership chain below is reconstructed from 37 CFR 3.73(c) "Statement Under 37 CFR 3.73(c)" documents of record in the '848 file history, which recite each reel/frame link verbatim, plus an Assignment Abstract of Title for the same reel/frame in a sibling Maxell proceeding. Where a field (execution date, correspondent) was not visible in the retrieved record, I say so rather than filling it in.

  • '848 file-history 3.73(c) chain: https://www.docketalarm.com/cases/PTAB/IPR2024-00867/Samsung_Electronics_Co._Ltd/docs/05-01-2024-Petitioner/Exhibit-1003-Ex_1003_Part_01_File_History_of_US_Pat_No_10,176,848.pdf (IPR2024-00867, Ex. 1003, "File History of US Pat. No. 10,176,848"), signed 2018-07-25.
  • Same-reel assignment abstract (sibling patent): https://www.docketalarm.com/cases/PTAB/IPR2024-00906/Samsung_Electronics_Co._Ltd/docs/05-17-2024-Petitioner/Exhibit-1006-EX1006_Part_01___File_History_of_Reexam_10,129,590_90014,651.pdf (IPR2024-00906, Ex. 1006).
  • Cross-portfolio 3.73(c) evidencing the 2021 links: https://ptacts.uspto.gov/ptacts/public-informations/petitions/1558234/download-documents (signed 2022-01-31).

Inventors

Inventor Residence of record Employer at filing Evidence
Mari Yoshida (sole named inventor) Yokohama, JP Hitachi, Ltd. Assignment from "YOSHIDA, M." to "HITACHI, LTD.," Reel 022596 / Frame 0595, recited in the '848 file-history 3.73(c) statement; JP priority JP 2008-130678 filed 2008-05-19 by the Hitachi side

Pattern notes:

  • Only one named inventor on a fairly complex video-camera feature patent (face recognition + chapter importance) — low inventorship is typical of Hitachi's Japanese in-house filings and is not by itself a fire-sale tell.
  • The assignment to Hitachi, Ltd. is a standard employee-invention assignment, executed around the 2009 US filing of the parent application (Ser. No. 12/430,185, 2009-04-27). Sibling applications from the same Hitachi group list inventor addresses as "c/o Hitachi, Ltd., Intellectual Property Group, 6-1 Marunouchi 1-chome, Chiyoda-ku, Tokyo," confirming group employment.
  • "All inventors departed within 12 months" pattern: cannot be determined. No departure/termination records are retrieved, and the portfolio moves below are entity-level, not inventor-level.
  • No inventor is ever a party to any later link in the chain — after Reel 022596/0595, all six subsequent recordings are entity-to-entity. That is normal for a corporate research portfolio and argues against any inventor-controlled shell.

Original assignee

Two answers, because they differ, and this matters:

  1. Assignee named on the issued patent / Google Patents "Original Assignee": Maxell, Ltd. (Kyoto, JP — 1 Koizumi, Oyamazaki, Oyamazaki-cho, Otokuni-gun, Kyoto). This is an artifact of the continuation timing: app 14/478,020 was filed 2014-09-05, the portfolio had already passed to Hitachi Maxell in 2013, and the patent did not issue until 2019-01-08 — after the 2017 transfer to Maxell, Ltd. So the front page reflects post-transfer ownership, not the original owner.
  2. True original assignee from the inventors: Hitachi, Ltd. (Reel 022596/0595). Hitachi is the actual originating owner of the invention.

Primary line of business / product embodiment:

  • Hitachi, Ltd. (Tokyo) — diversified industrial/electronics conglomerate; the invention is a consumer video camera (spec: "hybrid video camera" with HDD + DVD drive), i.e. a Hitachi consumer camcorder feature. Hitachi's camcorder business sat in the Hitachi Consumer Electronics unit. Whether a shipping Hitachi camcorder implemented claims 1/8/13 (two-mode VIP registration + importance-scored selective playback) is not confirmed — I found no product literature establishing embodiment, so treat as plausible but unverified.
  • Maxell, Ltd. (TSE-listed) — operating manufacturer, 50+ years of magnetic tape, optical media (DVD/BD), lithium-ion micro-batteries, alkaline batteries, projectors, and consumer accessories. Maxell's own pleadings describe the 2009/2013/2017 transfers as intended "to align its intellectual property with the licensing, business development, and research and development efforts of Maxell" (Maxell v. ASUS, E.D. Tex. 5:18-cv-00136, ¶¶1, 4). Maxell does not appear to ship a camcorder or any product embodying these claims today — an important caveat carried into the verdict.
  • Current status: Hitachi, Ltd. — operating. Maxell, Ltd. — operating and publicly listed; was Maxell Holdings, Ltd. between 2021 and the name-change back. Hitachi Consumer Electronics Co., Ltd. — per Maxell's own complaint, its IP went to Hitachi Maxell in 2013 as part of a reorganization; current separate corporate existence not confirmed. No bankruptcy of any assignor or assignee is of record.

Assignment timeline

Every recorded link. Note that all six are chain-of-title recordings; no security agreement, license, release, or third-party transfer to any entity outside the Hitachi/Maxell corporate family appears anywhere in the record.

1. c. 2009 (executed) / recorded c. 2009 — Reel 022596 / Frame 0595

  • Conveyance: Assignment of assignors' interest (employment assignment)
  • Assignor: Yoshida, Mari
  • Assignee: Hitachi, Ltd.
  • Correspondent: not visible in the retrieved 3.73(c) recitation
  • Context: ordinary employee invention assignment at the originating operating company. (Exact execution/recording dates not retrieved — the reel series is consistent with the 2009 US filing, but I will not state a date I did not see.)

2. c. 2009 — Reel 030622 / Frame 0001

  • Conveyance: Assignment (intra-group IP carve-out)
  • Assignor: Hitachi, Ltd.
  • Assignee: Hitachi Consumer Electronics Co., Ltd.
  • Correspondent: not retrieved
  • Context: internal reorganization — Hitachi moved its consumer-electronics IP into its consumer-electronics subsidiary ("in 2009 Hitachi, Ltd. assigned much of its intellectual property to Hitachi Consumer Electronics Co., Ltd.," 5:18-cv-00136 ¶4). Not a third-party sale.

3. c. 2013 — Reel 033685 / Frame 0883

  • Conveyance: Assignment (intra-group IP carve-out)
  • Assignor: Hitachi Consumer Electronics Co., Ltd.
  • Assignee: Hitachi Maxell, Ltd.
  • Correspondent: not retrieved
  • Context: internal reorganization — "in 2013, Hitachi Consumer Electronics Co., Ltd. assigned the intellectual property, including the patents in this case, to Hitachi Maxell, Ltd." (5:18-cv-00136 ¶4). Note this is a different bulk reel than the one used for neighboring patents in the same portfolio (e.g. Reel 033694/0745 for the '590 family), confirming these were per-batch bulk recordings, not per-patent instruments.

4. 2017-10-01 (executed) / recorded 2018-01-25 — Reel 045142 / Frame 0208

  • Conveyance: Assignment of assignors' interest (see document for details) — 141 pages, a bulk, multi-patent instrument
  • Assignor: Hitachi Maxell, Ltd.
  • Assignee: Maxell, Ltd. (recorded address: 1 Koizumi, Oyamazaki, Oyamazaki-cho, Otokuni-gun, Kyoto, Japan)
  • Correspondent: Nadeen Nsouli, 71 South Wacker Drive, Chicago, IL 60606 — recurrence flag: the identical reel/frame and correspondent appear as the recorded transfer for many other Maxell patents (e.g. US 10,128,885; US 10,129,590 family), i.e. a repeat recording correspondent across the Maxell portfolio, though this is a corporate M&A recording, not an NPE-assertion filer. (The corresponding address is a Chicago office tower; I did not independently verify the firm name behind it, so I name only the correspondent of record.)
  • Context: transfer-to-monetization entity — Maxell, Ltd. (the reorganized/renamed successor of Hitachi Maxell) took the pooled portfolio; mailing date of record 2018-03-09.

5. recorded 2021-11-29 — Reel 058255 / Frame 0579

  • Conveyance: Merger
  • Assignor: Maxell, Ltd.
  • Assignee: Maxell Holdings, Ltd.
  • Correspondent: not retrieved
  • Context: internal reorganization — corporate merger of the operating company into the listed holding company. Matches the Google Patents legal-events entry "2021-11-29 Assigned to MAXELL HOLDINGS, LTD. — MERGER — Assignors: MAXELL, LTD."
  • (Confirmed as the merger link for Maxell's portfolio generally via a 3.73(c) statement signed 2022-01-31 in a sibling proceeding; I did not see the '848 named on that particular statement, so treat the '848-specific mapping of Reel 058255/0579 as highly probable but one step short of direct confirmation. The 2021-11-29 date and MERGER character match the '848 legal-events record exactly.)

6. recorded 2021-12-03 — Reel 058666 / Frame 0407

  • Conveyance: Change of name
  • Assignor: Maxell Holdings, Ltd.
  • Assignee: Maxell, Ltd.
  • Correspondent: not retrieved
  • Context: internal reorganization — name change only, four days after the merger. Matches Google Patents "2021-12-03 Assigned to MAXELL, LTD. — CHANGE OF NAME — Assignors: MAXELL HOLDINGS, LTD." No change in beneficial ownership; the 2021 pair is a holding-company round trip, not an ownership sale.

Non-ownership recorded documents (for completeness, not assignment links):

  • 2019-06-27 — Certificate of Correction approved/issued (Col. 15, claim 8, line 62: delete "reproduce the recorded image from," insert "reproduce the recorded image information from"). Request filed 2019-05-31 via the prosecution correspondent Mattingly & Malur, PC (docket ASA-9940-02; notification address ptomail@mmiplaw.com).
  • Ex parte reexamination of the '848 — a Reexamination Certificate (Ex. 1002) and reexam file history (Ex. 1004) exist in IPR2024-00867. The reexam produced no recorded ownership change.

Prosecution correspondent (useful contrast): the '848 was prosecuted by Mattingly & Malur, PC, an operating-company prosecution firm — not an NPE filer. The only 3.73(c) signature visible in the retrieved excerpt is partial ("/John R.", dated 2018-07-25); I will not guess the full name.


Timeline diagram

timeline
    title Ownership of US 10176848
    2008 : JP priority filed by Hitachi Ltd
    2009 : US application filed by Hitachi Ltd
         : Yoshida assigns to Hitachi Ltd
         : Hitachi Ltd to Hitachi Consumer Electronics
    2013 : Hitachi Consumer Electronics to Hitachi Maxell
    2017 : Hitachi Maxell to Maxell Ltd executed Oct 1
         : First Maxell portfolio suit filed vs ASUS
    2018 : Bulk reassignment recorded Jan 25
    2019 : Patent issues Jan 8
    2020 : Asserted vs Apple and in ITC action
    2021 : Maxell Ltd merged into Maxell Holdings
         : Renamed back to Maxell Ltd
    2023 : Asserted vs Samsung
    2025 : Jury verdict then set aside on JMOL
    2026 : Federal Circuit appeals pending

NPE / troll-pattern signals

1. Shell-entity transfer — NOT PRESENT.
Every assignee across all six links is an operating Japanese corporation: Hitachi, Ltd. (022596/0595); Hitachi Consumer Electronics Co., Ltd. (030622/0001); Hitachi Maxell, Ltd. (033685/0883); Maxell, Ltd. (045142/0208); Maxell Holdings, Ltd. (058255/0579); Maxell, Ltd. (058666/0407). There is no LLC, no LP, no "IP Holdings / Licensing / Ventures" vehicle, no registered-agent service address, and no single-purpose entity anywhere. Both 2021 links are explicitly a MERGER and a CHANGE OF NAME.

2. Known asserter in the chain — NOT PRESENT (against the named lists).
No link matches Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, or a Spangenberg entity. The chain begins and ends with the Hitachi/Maxell corporate family. Caveat worth stating: Maxell, Ltd. is a high-frequency patent plaintiff (Apple, Samsung, ASUS, VIZIO, plus UPC, Tokyo and ITC actions), so it will appear on "frequent filer" dashboards — but that is enforcement volume, not NPE classification, and the assignee manufactures and sells physical products (storage media, batteries, projectors).

3. Repeat correspondent across the chain — UNCLEAR / PARTIALLY PRESENT.

  • Nadeen Nsouli, 71 South Wacker Drive, Chicago, IL 60606 is the recorded correspondent on Reel 045142/0208 (executed 2017-10-01, recorded 2018-01-25, 141 pages) — the same bulk instrument recorded against numerous other Maxell patents (US 10,128,885; US 10,129,590 family). So the name does recur across the Maxell portfolio, which is the kind of "same lawyer, many entities" pattern worth flagging — but the entities are not shell LLCs, and the instrument is a corporate M&A bulk assignment, so the recurrence is what you'd expect from a single law firm handling one client's portfolio. One link only within this patent's chain.
  • Correspondents for links 1, 2, 3, 5 and 6 were not retrieved, so I cannot rule out further recurrence.
  • The prosecution/recording-side correspondent on the application was Mattingly & Malur, PC (ASA-9940-02) — an operating-company firm with no NPE-assertion profile.

4. Cascading transfers — NOT PRESENT (as an NPE signal).
The only compressed sequence is 2021-11-29 (Maxell, Ltd. → Maxell Holdings, Ltd., MERGER, Reel 058255/0579) followed four days later by 2021-12-03 (Maxell Holdings, Ltd. → Maxell, Ltd., CHANGE OF NAME, Reel 058666/0407). Both are intra-group Japanese holding-company mechanics with no intervening LLC, no shared anonymous address, and no litigation within 24 months that depended on them. The 2017 and 2013/2009 links are each single hops separated by years.

5. Pre-litigation transfer — PRESENT at portfolio level / NOT PRESENT at patent level.

  • Portfolio level (the tell): the Hitachi Maxell → Maxell, Ltd. transfer was executed 2017-10-01 (Reel 045142/0208, recorded 2018-01-25), and Maxell filed its first major portfolio enforcement action twelve days later, against ASUS on 2017-10-13 (C.D. Cal. 2:17-cv-07528, later N.D. Cal. 3:18-cv-01788, per 5:18-cv-00136 ¶6). A bulk portfolio assignment executed days before a licensing/litigation campaign is the classic "portfolio moved into asserting hands, then sued" sequence.
  • Patent level (the '848 itself): not within 6 months. The '848 issued 2019-01-08; Maxell first asserted it in W.D. Tex. 6:20-cv-00646 (filed 2020-07-16) and in ITC 337-TA-1215 (complaint 2020-07-17, '848 allegations withdrawn 2021-02-05) — roughly 2.8 years after the assignment. So the transfer was not a suit-imminent conveyance for this specific patent.

6. Bankruptcy fire-sale — NOT PRESENT.
No assignor or assignee filed Chapter 7/11; there is no sale in bankruptcy. The Hitachi → Hitachi Consumer Electronics (030622/0001) and Hitachi Consumer Electronics → Hitachi Maxell (033685/0883) transfers are described by Maxell itself as reorganizations, and the 2017 transfer as a reorganization/divestiture — not an insolvency disposition.

7. Privateering — UNCLEAR / PARTIALLY PRESENT.

  • In favor: Hitachi divested the portfolio out of its own name (Hitachi Maxell → Maxell, Ltd., Reel 045142/0208, executed 2017-10-01) and the transferee then ran a global licensing and litigation campaign against Hitachi's competitors (Apple 2020, Samsung 2023, ASUS 2017/2018, VIZIO 2021, plus UPC and Tokyo actions) — the functional shape of an operating company monetizing a spun-out portfolio through a leaner affiliate. Additionally, in Maxell, Ltd. v. Apple Inc., E.D. Tex. 5:19-cv-00036, Maxell's trial witness list named Satoshi Matsuo, an employee of Hitachi, Ltd., whose designated subject was "Licensing of Maxell patents," and named Hitachi, Ltd. itself as "Prior owner of the Asserted Patents" (docketalarm.com/cases/Texas_Eastern_District_Court/5--19-cv-00036/.../docs/160/2.pdf) — i.e. the originating company retained personnel involved in monetizing the divested patents.
  • Against: the transferee is not a licensing-only shell; it is a manufacturer of 50+ years' standing with real revenue from storage media, batteries and accessories, and no retained Hitachi royalty, revenue share, or enforcement right is of record. That distinguishes this from textbook privateering (e.g. an operating company seeding a shell NPE under a secret revenue split).
  • Net: partial evidence, no recorded instrument establishing a Hitachi back-end interest.

8. Defensive aggregator — NOT PRESENT (no neutralization).
The chain ends at Maxell, Ltd. No RPX, AST, LOT Network, Unified Patents, or Open Invention Network link appears in any of the six recordings. This patent is on the asserting side: Unified Patents is the petitioner's side of the story (IPR2024-00867 is a Samsung petition), and Maxell's continuations on this family (US 10,418,069; 11,094,350; 11,727,960; 11,948,605; 12,400,685; and pending US 2025/0356882) show continued live prosecution aimed at keeping fresh claims available — not a portfolio parked for defense.


Verdict

Operating-company assertion.

All six recorded links run inside the Hitachi → Hitachi Consumer Electronics → Hitachi Maxell → Maxell, Ltd. corporate family (022596/0595; 030622/0001; 033685/0883; 045142/0208; 058255/0579; 058666/0407), with zero shell LLCs, zero known NPE assignees, and zero defensive-aggregator involvement; the current owner is a listed Japanese manufacturer that has asserted the '848 against genuine commercial competitors (Apple, Samsung) rather than against end users or small resellers.

Caveat I would not omit: this is a hybrid. The chain's second half is pure portfolio monetization — a bulk 141-page assignment executed 2017-10-01 (Reel 045142/0208), twelve days before Maxell's first portfolio suit, continuing continuations filed into 2025 and Hitachi personnel still designated for "licensing of Maxell patents." And the current assignee does not appear to ship a product embodying the claims (Maxell sells media and batteries, not the claimed face-recognition camcorder). Under the strict reading of the verdict definitions — "ships products embodying the claims" — a stricter analyst could reasonably land on NPE — moderate confidence on the strength of the 2017-10-01 / 2017-10-13 transfer-then-sue sequence (signal 5) plus the partial privateering evidence (signal 7). On the evidence of record, no ownership link ever passed through a non-practicing entity, so I do not classify the chain as an NPE chain.

Verify directly (authoritative, and needed to fill the gaps I flagged):

Uncertainty ledger: (i) execution/recording dates and correspondents for links 1, 2, 3, 5, 6 not retrieved; (ii) the full name behind the "/John R." 3.73(c) signature is unknown; (iii) the firm behind correspondent "Nadeen Nsouli, 71 South Wacker Drive, Chicago" is not independently verified; (iv) '848-specific mapping of Reels 058255/0579 and 058666/0407 is inferred from portfolio-wide recordings plus Google Patents legal events, not from a document naming the '848; (v) whether any Hitachi camcorder practiced the claims is unconfirmed.

Generated 9/28/2026, 6:54:03 PM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll search for the specific patent and its cited prior art references.

The generic searches returned mostly irrelevant chemistry patents. Let me target the actual cited references and the IPR prior art directly.

I now have the key IPR grounds. Let me pull the full front-page "References Cited" list and details on the primary IPR references.

Prior Art Analysis — U.S. Patent No. 10,176,848 B2

Query executed literally as 10176848. I did not auto-correct the number, and results for neighboring/other "848" patents (e.g., U.S. 7,883,848 — Olink; U.S. 10,719,848 — Roku/Anonymous Media IPRs) and for sibling Maxell family members (9,159,368; 10,418,069; 11,094,350; 11,727,960; 11,948,605; 12,400,685) were excluded except where needed to explain continuity.

Record confirmed. The record retrieved matches the previously-generated sections exactly: Yoshida, Mari; Maxell, Ltd.; App. 14/478,020 filed 2014-09-05; granted 2019-01-08; priority JP 2008-130678 (2008-05-19); continuation of Ser. No. 12/430,185. Google Patents lists the "Prior art date" as 2008-05-19. No contradiction with the earlier sections.

New fact that resolves a prior open item: the "84" token flagged in the earlier Patent summary is real in the source but is not a claim number. The Patent Owner's Preliminary Response in IPR2024-00867 literally reads "*Nozaki Fails to Disclose Claim Elements 8[g], 13[f], 18[f], and 84[c.v].*" (Docket Alarm transcription of IPR2024-00867 Paper 7, POPR). Since the patent has only 20 claims, "84[c.v]" is a transcription/formatting artifact. Per the operating rule I am not auto-correcting it, and I am not assigning it to a claim.


0. Method and a required caveat about "§102 anticipation"

I could not reach USPTO Patent Public Search / PatentCenter directly in this session. The front-page "References Cited" list below is transcribed from the printed-patent record for 10,176,848 (Justia's rendering of the USPTO front page), supplemented by USPTO-hosted PTAB documents on ptacts.uspto.gov and docket exhibits on docketalarm.com.

That fetch was truncated — my verified list of examiner-cited U.S. references ends at US 2011/0055766 (2011-03-03) and the foreign list at JP 2004-207842. Additional JP/KR/other references likely appear on the printed front page that I could not verify. I flag this rather than fill the gap by inference.

Legal framing (important, because it changes the answer): A patent is anticipated under 35 U.S.C. § 102 only when a single reference discloses every element of a claim, arranged as recited. Almost none of the citations below are §102 references. With one exception (the applicant-admitted Japanese reference), essentially all of this art was cited and used as § 103 background/obviousness art. This is confirmed by the IPR: the Board's grounds were obviousness grounds, and the Patent Owner argued that the primary reference fails to disclose claim elements — which is the opposite of an anticipation posture. I state this explicitly because the task asks which references "potentially anticipate," and for this patent the honest answer is: very few, and none for the independent claims.

Governing law: Application 14/478,020 was filed 2014-09-05, before 2013-03-16, and is a continuation of an application filed 2009-04-27, claiming 2008-05-19 JP priority. Pre-AIA §§ 102/103 apply. Consequently, art published after 2008-05-19 can only be prior art via a pre-2008-05-19 U.S. filing date under § 102(e) (e.g., a 2010 publication filed in 2007), not via its publication date.


1. Tier 1 — The prior art actually asserted against the '848 claims (the most relevant art)

This is the IPR2024-00867 record: Samsung Electronics Co., Ltd. et al. v. Maxell, Ltd., Case IPR2024-00867, U.S. Pat. No. 10,176,848, filed 2024-05-01, instituted 2024-11-07. The Patent Owner's Preliminary Response (Paper 7) identifies Grounds 1–3 as Nozaki in view of Haitani.

Exhibit list (from the Patexia/UniCourt document records for IPR2024-00867):

Exhibit Citation Date Description (grounded / flagged) Claims it was used against
Ex. 1006 WO 2007/060980 A1 (Nozaki) Published 2007 (WO 2007-series) Primary reference of Grounds 1–3. POPR §III argues the Petition "fails to set forth any motivation to combine the different embodiments of Nozaki." Subject matter not verified in this session beyond that it is the lead §103 reference and is disputed as not disclosing elements of claims 8, 13 and 18. Grounds 1–3 (challenged claims)
Ex. 1007 U.S. Pat. No. 9,665,597 (Haitani) Issued 2017-05-30 (U.S. filing predates 2008-05-19 — § 102(e)/§ 103 art) Secondary reference combined with Nozaki. Title/abstract not verified in this session. Grounds 1–3
Ex. 1008 U.S. Pat. App. Pub. No. 2004/0095376 A1 (Graham) Published 2004-05-20 Named among "references cited" in the Petition's grounds summary (POPR TOC: "Graham (Ex. 1008)"). Subject matter not verified. Petition grounds (secondary)
Ex. 1009 KR 2007/0017068 A (Kim) Published 2007 (Korean) Named among "references cited" (POPR TOC: "Kim (Ex. 1009)"). Subject matter not verified. Petition grounds (secondary)
Ex. 1014 U.S. Pat. No. 5,835,667 (Wactlar) Issued 1998-11-10 Named in exhibit list. Subject matter not verified in this session. Petition grounds (secondary)

Non-patent literature exhibits in the same IPR (Exs. 1010–1013, 1015) — these are UI/photo-management references and read on the selection and presentation limitations rather than on face recognition itself:

Exhibit Reference Date
Ex. 1010 PhotoMesa: Quantum Treemaps and Bubblemaps (UIST) 2001
Ex. 1011 Automatic Thumbnail Cropping (UIST) 2003
Ex. 1012 Event Based Clustering (Information Visualization / IwC) 2007
Ex. 1013 Zoomable User Interfaces (InfoVis) 2002
Ex. 1015 Novel Interfaces for Personal Photo Management (IJHCI) 2007

Ex. 1005 is the Declaration of Dr. Benjamin Bederson, through which these NPL references were put in evidence.

Outcome (as reported, flagged): the PTAB issued the Final Written Decision on 2025-11-06 and, per secondary reporting, held the challenged claims unpatentable for obviousness over combinations "including technologies for electronic cameras with human face recognition functions and image processing using different filters" (scalejuris). This is an obviousness result, i.e., § 103 — not § 102 anticipation. Consistent with the earlier summary, the FWD is on appeal at the Federal Circuit as 26-1625 (filed 2026-04-07).

Sources: https://www.docketalarm.com/cases/PTAB/IPR2024-00867/Samsung_Electronics_Co._Ltd_v._Maxell_Ltd/08-12-2024-Patent_Owner/POPR_filed-7-Patent_Owners_Preliminary_Response_to_Petition_for_Inter_Partes_Review_of_US_Patent_No_10,176,848/ ; https://services.patexia.com/lawsuits/Samsung-Electronics-Co-Ltd-et-al-v-Maxell-Ltd-id-[198930](/patent/198930)/documents/sort_by/created/sort_dir/asc ; https://scalejuris.com/news/12655/ptab-invalidates-maxell-video-processing

Family/bibliographic exhibits relevant to prior-art provenance: Ex. 1002 = Reexamination Certificate of U.S. Pat. No. 10,176,848; Ex. 1004 = Reexamination File History. ⚠️ These establish that an ex parte reexamination of the '848 patent occurred, and that the reexamination cited its own art — but the reexamination record and its cited references are not in the material I retrieved. That is the single biggest gap in this analysis.


2. Tier 2 — Examiner-cited references on the face of the patent ("References Cited")

Transcribed from the printed patent's front page (Justia rendering). Full citation + date are verified from that record; descriptions are given only where I have a grounded source, and are omitted rather than guessed otherwise.

2a. U.S. Patent Documents

Citation Date Notes
U.S. 5,809,202 (Gotoh et al.) 1998-09-15
U.S. 7,474,764 (Segawa et al.) 2009-01-06
U.S. 7,496,211 (Yamagami) 2009-02-24
U.S. 7,634,662 (Monroe) 2009-12-15
U.S. 7,853,897 (Ogawa et al.) 2010-12-14
U.S. 2002/0175997 (Takata et al.) 2002-11-28
U.S. 2003/0107592 (Li et al.) 2003-06-12
U.S. 2006/0188225 (Yamakage) 2006-08-24
U.S. 2007/0019083 (Nakashima) 2007-01-25 Also cited by Samsung as its "Nakashima" invalidity contention (POPR Ex. 2010 = US 2007/0019083, listed as "Samsung invalidity contentions (Nakashima)") — i.e., this reference is being re-used across the district-court and IPR tracks.
U.S. 2007/0036522 (Yoshida et al.) 2007-02-15 Same surname as the '848 inventor; different given name — do not conflate; I did not verify a family relationship.
U.S. 2007/0162924 (Radhakrishnan et al.) 2007-07-12
U.S. 2007/0171296 (Tsukiji et al.) 2007-07-26
U.S. 2007/0237360 (Irie et al.) 2007-10-11
U.S. 2008/0019665 (Huang et al.) 2008-01-24 Listed in the family citation graph as Cyberlink Corp — "Systems and Methods for Embedding Scene Processing Information in a Multimedia Source."
U.S. 2008/0131073 (Ogawa et al.) 2008-06-05
U.S. 2008/0144890 (Ogawa) 2008-06-19
U.S. 2008/0218595 (Kawahara) 2008-09-11
U.S. 2008/0225155 (Ebato et al.) 2008-09-18
U.S. 2008/0256450 (Takakura et al.) 2008-10-16
U.S. 2008/0279425 A1 (Tang) 2008-11-13 Listed in the family citation graph as Mira Electronics Co Ltd — "Human Face Recognition and User Interface System for Digital Camera and Video Camera." Filed 2007-04-13 → pre-2008-05-19 U.S. filing date, so a § 102(e) candidate (see §4).
U.S. 2008/0309795 (Mitsuhashi et al.) 2008-12-18
U.S. 2009/0016575 (Bak et al.) 2009-01-15
U.S. 2009/0059008 (Ishii) 2009-03-05
U.S. 2009/0135269 (Nozaki et al.) 2009-05-28 Notable overlap: this is the U.S. publication of the same "Nozaki" family used by Samsung as IPR Ex. 1006 (WO 2007/060980), and it is also listed as Patent Owner Ex. 2005 in the IPR. It is already on the face of the '848 patent.
U.S. 2010/0014719 (Date et al.) 2010-01-21
U.S. 2011/0055766 (Ogawa et al.) 2011-03-03

(List possibly incomplete — see caveat in §0.)

2b. Foreign Patent Documents

Citation Date Notes
JP 06-165009 1994-06 See §3 — the only reference cited in the specification itself.
JP 2001-045395 2001-02
JP 2002-333652 2002-11
JP 2003-046911 2003-02
JP 2003-150603 2003-05
JP 2003-283993 2003-10
JP 2004-207842 2004-07 Corroborated in the family citation graph as JP-2004207842-A.
… List truncated at my source; further JP entries likely exist.

Other references appearing in the family citation graph that I could not tie to a specific front-page line (listed here as leads only, not as confirmed citations of the '848 patent): JP-2009033351-A (Canon Inc, 2007-07-25, "Recording / Reproducing Apparatus and Method"); US-8384791-B2 (Sony Europe BV UK Branch, 2002-11-29, "Video Camera for Face Detection"); US-20080232651-A1 (Artnix Inc, 2007-03-22, "Apparatus and Method for Detecting Face Region"); WO-2009082814-A1 (priority 2007-12-31, "Identification and Sharing of Digital Images with Face Signatures"); US-6564225-B1; US-6351556-B1; US-5638136-A; US-7760917-B2; JP-2009059445-A; JP-2012054948-A; US-6332033-B1; US-5978519-A; US-6456732-B1; US-6473199-B1.

Source: https://patents.justia.com/patent/10176848 ; https://portal.unifiedpatents.com/patents/patent/US-11727960-B2


3. Tier 3 — Applicant-admitted prior art in the specification (§ 102(b)-type admission)

JP-A-06-165009 (JP 6-165009), laid open June 1994 — cited four times in the '848 specification itself, twice in the Background and twice in the Summary:

  • "JP-A-06-165009 discloses techniques of efficiently knowing the contents of a scene by calculating a priority order of each frame from the type of button manipulation during photographing, and reproducing a frame having a higher priority order."
  • "…and when digest reproduction for knowing the contents of a scene is to be performed, reproducing a frame having a higher priority order. According to the techniques, however, a priority degree cannot be set to a scene photographed without button manipulation by a user."

This is the strongest single-reference candidate on the record, because the applicant concedes it discloses the selective/digest reproduction of a scene based on a per-frame priority ordering — i.e., much of the "selectively reproduce… among importance levels" concept. The applicant distinguishes it only on how the priority is derived (button-manipulation type vs. face-recognition of a user-designated VIP). Because that distinguishing feature is the point of novelty of every independent claim, JP 6-165009 does not anticipate claims 1, 8, 13 or 18 — but it is a classic § 103 base reference and is the most useful single document for a validity attack rooted in the specification's own admissions.


4. § 102 anticipation assessment — claim by claim

Claim Closest single reference Does it anticipate?
1 (photograph → record → face-recognize → reproduce, with first setting mode = person specified from a face recognized after mode selection and before recording, and second setting mode = person specified from a face already recorded and previously recognized) No single reference on the record discloses the two-mode specific-person setting unit in combination with face recognition and selective reproduction. No anticipation shown. This is why Samsung pleaded § 103 (Nozaki + Haitani), and why the POPR could argue Nozaki "fails to disclose claim elements 8[g], 13[f], 18[f]."
8 (processor/memory mirror of claim 1, "register a person… first mode = newly photographed; second mode = selected from a plurality of faces in already-recorded image information") Same as claim 1. No anticipation shown (same §103 posture).
13 and 18 ("firstly pick out image information which includes the registered specific person; secondly pick out… based on a predetermined condition set by user instruction; selectively and sequentially reproduce") JP 6-165009 for the "pick out by priority, then reproduce" scaffold; but it lacks face recognition entirely. No anticipation shown.
6–7 / 11–12 / 16–17 (first/second/third reproducing mode hierarchy where the shorter mode's content is a subset of the longer mode's) JP 6-165009 (digest vs. normal reproduction) is the closest in spirit. Arguably the most susceptible to §102 on the mode-hierarchy sub-feature standing alone — but it remains a dependent claim and is not anticipated as a whole claim by anything on this record.
Closest § 102(e) candidate for the face-recognition + camera + user-interface concept: U.S. 2008/0279425 A1 (Tang), Mira Electronics, "Human Face Recognition and User Interface System for Digital Camera and Video Camera," filed 2007-04-13. Lead, not a conclusion. Its 2007-04-13 filing date makes it §102(e)-qualified art despite its 2008-11-13 publication. Whether it discloses the two-mode registration and selective reproduction limitations is not verified in this session.

Bottom line: on the material retrieved, no reference anticipates any independent claim of 10,176,848. Every actual challenge on the record (IPR2024-00867) is an obviousness (§ 103) challenge, and the PTAB's reported holding was obviousness, not anticipation. The two references with the highest §102 potential — JP 6-165009 (admitted, but missing face recognition) and U.S. 2008/0279425 (Tang, §102(e)-qualified) — each fail on at least one essential claim element on the face of what I retrieved.


5. Explicit uncertainty / gaps

  1. Front-page list is incomplete. My source truncated the examiner-cited list; further JP (and possibly KR/other) references and any "Other Documents" (NPL) cited during prosecution of 12/430,185 / 14/478,020 are unverified.
  2. The ex parte reexamination record is missing. Exs. 1002 and 1004 in IPR2024-00867 prove a reexamination issued a certificate, but I did not retrieve the reexamination's own cited art or its outcome. The earlier summary's note that Apple instigated a reexamination remains unconfirmed and is not repeated here as fact.
  3. The "84[c.v]" token in the POPR is reproduced literally and is, on its face, not a claim of this 20-claim patent. I did not correct it and did not map it to a claim.
  4. Reference titles/subject matter are given only where grounded (Tang, Huang, JP 2004-207842, the Tier-1 NPL, and JP 6-165009). Where I had no grounded source I left the description blank rather than infer from the inventor/assignee name.
  5. IPR2024-00867 FWD substance is reported by a secondary source (scalejuris) as an obviousness invalidation of all challenged claims; I did not read the FWD itself in this session. Appeal No. 26-1625 (Fed. Cir., filed 2026-04-07) is pending.
  6. For the authoritative citation list, the printed patent's front page and the reexamination file wrapper should be pulled from USPTO Patent Public Search / PatentCenter directly, and the IPR2021-00367 and IPR2024-00867 papers retrieved from the PTAB portal, since the art actually relied on against these claims lives in those files.

Generated 9/28/2026, 6:53:47 PM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

I'll research the prior art actually cited against this patent before building the §103 analysis.

I found the actual IPR grounds. Let me pull the Final Written Decision details and the reexamination certificate, since the record references "cancelled claim 8" and an unusual claim number.

Let me get the Board's specific motivation-to-combine reasoning and the Ground 2/3 (Graham/Kim) findings.

Obviousness Analysis — U.S. Patent No. 10,176,848 B2 (35 U.S.C. § 103)

Analyst note on sources. The "Prior Art" content for this patent is not a static list on the Google Patents page; the operative prior-art record for the '848 patent lives in (a) the prosecution/reexamination file history and (b) the IPR that Samsung filed. I therefore grounded this analysis in the prior art actually applied by the PTAB in IPR2024-00867, plus the references applied during original prosecution and the ex parte reexamination. All citations below are to the retrieved record; anything I could not verify is flagged.


0. A correction/refinement to the earlier generated sections

The earlier "Patent summary" section states the independent claims are 1, 8, 13, 18, based on the as-issued text. That is correct for the patent as granted, but it is no longer the operative claim set. The PTAB record states:

"Claims 11 and 12 … depend directly or indirectly from independent claim 8 …, which was corrected after issuance … and canceled in reexamination… Claims 16 and 17 … depend … from independent claim 13, which was canceled in reexamination… Claims 19 and 20 … depend from independent claim 18, which was canceled in reexamination… Claim 84 … is independent, and was added in reexamination and corrected."

— FWD, quoting Exs. 1001–1004 (ptacts.uspto.gov, IPR2024-00867)

So the § 103 analysis must be run against the post-reexamination claim set, in which claims 11, 16 and 19 are effectively independent (each "incorporating the limitations of canceled claim" 8, 13 and 18 respectively), 12/17/20 are their respective dependents, and claim 84 is a reexamination-added independent claim. This also resolves the earlier uncertainty in the prior sections: the mysterious "84" token in the aggregator data is not a formatting artifact — it is a real, live, independent claim added during reexamination.

⚠️ Unresolved: the record confirms at least claims 8, 13 and 18 were cancelled and 84 added, but does not tell me the status of original claims 1–7 (and 9–10, 14–15). Only 11, 12, 16, 17, 19, 20 and 84 were challenged. I cannot state from the retrieved sources whether claims 1–7 remain live. Treat the claim set as "at least {11, 12, 16, 17, 19, 20, 84}."


1. Legal framework and the operative dates

  • Statutory basis applied: pre-AIA § 103(a). The Board expressly framed Ground 2 as "unpatentable under 35 U.S.C. § 103(a)." That is consistent with the '848 being a continuation of Ser. No. 12/430,185 (filed 2009-04-27) claiming JP 2008-130678 (2008-05-19) — i.e., a pre-March-16-2013 effective filing date.
  • POSITA: the Board adopted Petitioner's definition, uncontested by Maxell: "a person having a Bachelors' degree in electrical or computer engineering or a comparable field of study, with at least two to three years of experience in the field of image processing," with additional education substituting for experience and vice versa. (Institution Decision)
  • Claim construction: Phillips ordinary-and-customary meaning; the only term in controversy was "mode," which Maxell proposed to construe as "an operational state that a system has been switched to." The Board did not need to construe it dispositively because the combination satisfied the claims even under Maxell's construction. (Petitioner's Reply)

The prior art and why each reference qualifies

Ref. Identity Critical date Pre-AIA § 102 status
Nozaki (Ex. 1006) WO 2007/060980 A1, published 2007-05-31 2007-05-31 (publ.); U.S. counterpart pub. US 2009/0135269, issued as US 8,488,847 § 102(a)/(e) — not § 102(b), because 2007-05-31 is within one year of the 2008-05-19 priority date
Haitani (Ex. 1007) US 9,665,597 B2, filed 2007-03-22, issued 2017-05-30 2007-03-22 § 102(e) (U.S. patent/application publication, pre-AIA)
Graham (Ex. 1008) US 2004/0095376 A1, published 2004-05-20 2004-05-20 § 102(b)
Kim (Ex. 1009) KR 10-2007-0017068 A, published 2007-02-08 2007-02-08 § 102(b) (printed publication, >1 yr before 2008-05-19)

Prosecution/reexam art of record that supplies further § 103 fodder: JP-A-06-165009 (admitted prior art in the '848 specification itself), Nakashima (face recognition before recording; face-thumbnail list; specific-person selection; importance-level setting), Gallagher (US 2007/0098303), Yamagami, and the background/state-of-the-art exhibits Exs. 1010–1015 (PhotoMesa treemaps; automatic thumbnail cropping; event-based clustering; zoomable UIs; novel personal-photo-management interfaces) and Ex. 1014 Wactlar (US 5,835,667, video skim).


2. Ground 1 — Nozaki in view of Haitani → claims 11, 12, 16, 17, 19, 20

This is the core ground. The Board's claim-by-claim treatment groups the claims into three parallel families: 11/12 (built on cancelled claim 8), 16/17 (built on cancelled claim 13), 19/20 (built on cancelled claim 18). The Board found 16/17 and 19/20 "substantially similar" to 11/12 and resolved them on the same evidence.

2.1 Nozaki alone supplies the claim-8 core (the two-setting-mode architecture)

Per the Board's institution decision and FWD, Nozaki discloses an electronic camera with face registration in which:

  • A user newly photographs a person; the device generates "face registration image data" based on the release-time image signal, then derives "face recognizing data" (used to identify that person in later images) and "index image data" — a cropped, resized face thumbnail. Stored, with shooting condition and date/time, in a face registration memory tied to a group folder. → maps to [8c] capture a photograph, [8e] face-recognizing process, [8g] first setting mode ("obtained by newly photographing the person in a photographing mode and thereafter registered").
  • Nozaki also discloses a "regeneration mode" for selecting and reproducing saved images, in which recorded/index images (i.e., faces in already-recorded image information) are browsed and selected. → maps to [8f] reproduce the recorded image information and [8h] second setting mode ("selected from a plurality of faces in the image information recorded in the recording medium and thereafter registered").
  • Nozaki further generates, alongside face-recognizing data, date and time information, relationship-to-user information, and event labels "such as family and group activities" — the identical non-image metadata families that Haitani uses as filters. Nozaki even teaches sorting index images on the detail screen sequentially by capture time.

The Board credited Petitioner's expert (Dr. Bederson) that "the 'new' face registration process is completed after Nozaki's device captures a photograph of him/her," rejecting Maxell's argument that Nozaki operates in "precisely the opposite manner" by requiring registration information first.

2.2 Haitani supplies claim 11's reproducing-mode limitations [11a]–[11c]

Haitani (a portable computer system with photo/video management) discloses different modes of reproducing data using one filter or a combination of filters:

  • Limitation [11a] — "first reproducing mode and … second reproducing mode": Haitani's user-selectable filters of varying degrees of specificity, arranged so that a first filter "may cover a broad range" and a second filter responsive thereto "display[s] filter options that are narrower." Board cites Ex. 1007, 10:61–11:3, 11:15–33, 12:16–17, 13:9–13, 20:45–50.
  • Limitation [11b] — shorter reproducing time in the first mode: the narrower filter set reproduces a subset, hence a shorter reproduction time.
  • Limitation [11c] — "the image information reproduced under the second mode includes the image information reproduced under the first reproducing mode and other … not reproduced under the first": the Board accepted the nesting argument — "the images/videos reproduced in the 'broad' second mode that uses a single search term (e.g., only face recognizing data) would include the images/videos reproduced in the 'narrower' first mode (e.g., face recognizing data plus a date/time range) as well as other images/videos that the first mode did not cause to be reproduced." (FWD)
  • Claim 12 — the third reproducing mode: Haitani's graduated filter ladder (state → city → areas within a city), which the Board treated as the third mode.

2.3 Why the POSITA would have combined Nozaki and Haitani

The articulated motivations, which the Board accepted on the full record:

  1. Same field / analogous art. Both are image-capture-and-management devices handling face-recognition data and photo/video retrieval; no field-of-endeavor mismatch (In re Bigio was Maxell's authority, rejected on the facts).
  2. Reference compatibility of the data types. Nozaki already creates exactly the metadata Haitani filters on — face-recognizing data, date/time, relationship, events ("family and group activities"). A POSITA "would have recognized that Nozaki already suggests sorting the index images … according to the times when the images were captured."
  3. Direct express suggestion in Haitani. Haitani expressly teaches filters may be combined, and that filters have "varying degrees of specificity," with one covering a broad range and the next narrowing. Implementing that in Nozaki yields the claimed first/second (and third) reproducing modes.
  4. Predictable, low-cost, minimal modification. "Such a modification would have required a minimal number of changes to Nozaki's existing design, which were well within the skill in the art at the time."
  5. Art-recognized problem + KSR rationales. The techniques are "a combination of familiar elements according to known methods [yielding] predictable results" — the express KSR rationale Maxell itself invoked in its sur-reply. Market demand for fast browsing of large libraries supplies the articulated business/design motivation.

The Board concluded for each claim that "a person of ordinary skill in the art at the time of the claimed invention would have had reason to combine their teachings in the manner described, and would have had a reasonable expectation of success."

2.4 The Patent Owner's rebuttals, and why they failed (material for the pending appeal)

Maxell's argument Disposition
§ 325(d) discretionary denial — Nozaki and Haitani were previously before the Office (Nozaki in prosecution and reexam; Haitani in reexam) Board declined, finding "no verifiable evidence … that Nozaki, Haitani, Graham, or Kim were ever meaningfully addressed" by the Office, so Advanced Bionics Prong 1 was not met. Maxell sought Director Review on this point (PO Request for Director Review)
Cumulativeness — Nozaki is cumulative to Gallagher; Haitani/Graham/Kim cumulative to other reexam art Rejected; the Board held a party's district-court contentions do not, without more, establish what the Office "meaningfully addressed"
"Filter" ≠ "mode" — Haitani's filters are "not operational states," so no first/second modes Rejected. The Board did not need to construe "mode" because the combination met the limitations even under Maxell's own construction, and Maxell's expert deposition undercut the argument
Nozaki has 57 inventions across 7 embodiments → no motivation to combine a particular embodiment with the secondary art Rejected; credited Dr. Bederson
[11c] failure of proof — the narrower two-filter set "could comprise the entire universe of face-recognition images in the broader filter," so nesting is not guaranteed Rejected on Haitani's express broad/narrow specificity teachings + credited expert testimony. This is the argument Maxell is pressing hardest on appeal, and it is the analytically softest spot in the ground

3. Grounds 2 and 3 — claim 84 (added in reexamination)

Ground Statutory basis Combination Claim
2 § 103(a) Nozaki + Haitani + Graham 84
3 § 103(a) Nozaki + Haitani + Kim 84

Grounds 2 and 3 are alternatives to each other on the same claim, sharing the Ground-1 Nozaki+Haitani core and adding a tertiary reference for the remaining limitations:

  • Nozaki + Haitani were relied on for limitations [84c.vii] and [84d];
  • Graham (Ground 2) and Kim (Ground 3) were relied on for limitations [84h.i] and [84h.ii].

Motivation to add Graham (Ground 2): Petitioner asserted Graham is analogous art because, "like Nozaki and Haitani, Graham discloses a method for selectively reproducing video files in the context of a computer device (with or without a camera) like a PDA, a cell phone, or a video camera" (Pet. 37, citing Ex. 1008 ¶¶ 72–73, 318). Same problem, same field, same predictable combination — the KSR "familiar elements, known methods" rationale.

Motivation to add Kim (Ground 3): Kim supplies the corresponding teaching in the alternative, the Board again finding a reason to combine and a reasonable expectation of success.

Procedural significance for claim 84: because the Board instituted on Ground 1 and then instituted the remaining grounds, Grounds 2 and 3 were decided on the same full record. Maxell "did not separately challenge Petitioner's evidence and arguments that the asserted prior art teaches all of the recited limitations of claim 84" — it contested only the rationale to combine. That is a materially weaker defensive posture than a limitation-by-limitation traverse.

⚠️ Disclosure: the full text of claim 84 is not in the material supplied to me; I can identify its sub-elements only from the parties' and the Board's limitation labels ([84c.vii], [84d], [84h.i], [84h.ii]). I therefore describe which limitations each tertiary reference was used for, and cannot independently map claim 84's preamble or every element.


4. Additional § 103 combinations the record supports (my own analysis, not necessarily run by the Board)

These are combinations a challenger could plead independently or in the alternative, and that bear on the strength of the validity position even if unused:

  1. JP-A-06-165009 + Nozaki/Haitani. The '848 specification admits JP-A-06-165009 (button-manipulation priority ordering for digest reproduction) as prior art and distinguishes it only on the ground that "a priority degree cannot be set to a scene photographed without button manipulation." That is an express admission that the only gap is the source of the priority signal. Substituting face-recognition-derived importance for button-manipulation-derived priority is the paradigm of an obvious substitution of one known, art-recognized ranking signal for another — and Nozaki/Nakashima/Kim all supply automatic, manipulation-free person-based indexing. This combination is arguably cleaner than the Board's Ground 1 on the "importance level" concept (though cancelled claims 1/8/13/18 are the ones that recited it).
  2. Nozaki + Haitani + Nakashima. Nakashima was the reexamination examiner's own secondary reference and was cited for exactly the elements now in claim 84's neighborhood: face recognition before recording, a list of face thumbnail images of registered persons, a specific-person setting unit selecting a person from that list, and an importance level set for recorded image data containing the specific person. If any live claim recites an explicit "importance level" (as the cancelled independent claims did), Nakashima — not Graham or Kim — is the natural tertiary reference, combined with Nozaki under the "appropriately perform facial recognition to determine matches between registration facial images and extracted facial images" rationale recorded on the PTO-892.
  3. Wactlar (Ex. 1014) + Nozaki + Haitani. For the "selectively and sequentially reproduce" element of claim 84's family, Wactlar's video-skim/summary playback supplies a known mechanism for sequential reproduction of a selected subset.
  4. Exs. 1010–1015 as § 103 general-knowledge/state-of-the-art support for the "pick out, then pick out again by a user-set condition, then sequentially reproduce" workflow (event-based clustering, treemap browsing, thumbnail cropping, zoomable UIs, personal-photo-management interfaces). These are well suited to establishing that the interaction paradigm was conventional, even if they never appear in a formal ground.

5. Objective indicia / secondary considerations

I found no evidence in the retrieved record of nexus-bearing objective indicia — no unexpected results, no copying, no industry praise, no licensing-nexus evidence, no long-felt-but-unmet need articulated in the IPR papers. The only secondary indicator of note is the district-court jury verdict (E.D. Tex. 5:23-cv-00092, 2025-05-28) finding claims 11 and 12 willfully infringed (~$28.2M of a ~$111.7M award) — which is evidence of commercial value but is not a § 103 secondary consideration, and it was subsequently vacated by JMOL of noninfringement (Judge Schroeder, 2025-09-18). Nothing in the record suggests a nexus between any praise or success and the claimed subject matter as opposed to the accused consumer devices.


6. Bottom line

  • The '848 patent's live claim set is narrower than the issued patent. The reexamination cancelled independent claims 8, 13 and 18 and added independent claim 84; the challenged live claims are 11, 12, 16, 17, 19, 20 and 84, with 11/16/19 effectively independent.
  • On the strongest record I can verify, the claims are obvious. Ground 1 (Nozaki + Haitani) disposes of claims 11, 12, 16, 17, 19 and 20; Grounds 2 and 3 (Nozaki + Haitani + Graham, or + Kim) dispose of claim 84. The motivations to combine are (i) same field/analogous art, (ii) data-type compatibility (Nozaki already generates the exact metadata Haitani filters on), (iii) Haitani's express "broad filter → narrower filter" teaching that maps directly onto the claimed first/second/third reproducing modes, and (iv) minimal modification with predictable results — a textbook KSR rationale.
  • The verdict is confirmed by the PTAB. The Final Written Decision of 2025-11-06 held the challenged claims unpatentable, and Maxell has appealed (Fed. Cir. 26-1625, notice of appeal reported 2026-04-07; Maxell also moved to stay its parallel JMOL appeal, 26-1111, pending the PTAB proceedings). ⚠️ The substantive FWD outcome rests on a secondary account (scalejuris.com, reporting "the board found that claims of a Maxell patent for a recording and reproducing apparatus and method were … unpatentable … in light of various prior art combinations … electronic cameras with human face recognition functions and image processing using different filters"); I did not read a primary FWD disposition line, and the fact that Maxell is the appellant is consistent with, but does not prove, an adverse judgment.
  • Where Maxell can still win on appeal — and the realistic soft spots — are: (1) the § 325(d) / Advanced Bionics abuse-of-discretion theory (which Maxell already took to Director Review), and (2) the limitation [11c] nesting requirement, i.e., whether Haitani's two-filter search necessarily reproduces a superset containing the narrower mode's entire output. If the Federal Circuit reads "includes … and other" as requiring a structural guarantee of superset containment rather than a practical one, claims 11/16/19 (and their dependents) could be salvaged — but claim 84 would remain exposed on Grounds 2/3, and the alternative combinations in § 4 above provide fallback grounds.

Verification status. The prior-art identities, claim groupings, institution/de-institution outcomes and the Board's stated rationales are quoted from the IPR2024-00867 papers and decision excerpts retrieved today. The full text of claim 84, the status of original claims 1–7, and the primary-source FWD disposition line are not verified and are flagged as such above. No patent number was auto-corrected; "10,176,848" and the bare claim label "84" were interpreted literally throughout.

Generated 9/28/2026, 6:54:05 PM

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