Invalidity dossier
US 5923908
Current assignee: Xerox Corporation
Added 9/29/2026, 2:11:21 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative information on this patent, including any 2026 CAFC docket activity.
US 5,923,908 — Verification Summary
Bottom line on your two database requests: I confirmed the patent bibliographic data and the district-court litigation trails (below). I found no Federal Circuit docket in 2026 (or any year) naming patent 5,923,908. That is a "no hits found," not an affirmative proof of absence — court dockets are not fully text-indexed in the general web, so treat the CAFC-negative as unverified rather than established.
1. Bibliographic data (matches USPTO/Google Patents face record)
| Field | Value |
|---|---|
| Patent number | US 5,923,908 A (rendered "5923908" without commas in some databases) |
| Title | Camera with touch sensitive control |
| Application no. | 08/960,822 |
| Filing date | October 30, 1997 |
| Issue/publication date | July 13, 1999 |
| Inventors | Anthony W. Schrock (Rochester, NY); Paul E. Spencer (Livonia, NY) |
| Original assignee | Eastman Kodak Company, Rochester, NY |
| Current assignee (as listed) | Monument Peak Ventures, LLC |
| Legal status | Expired – Lifetime (anticipated expiration Oct. 30, 2017; 12-year maintenance fee paid Dec. 28, 2010) |
| Classifications | G03B 17/00, 17/38, 7/091, 7/093; H04N 23/53, 23/631, 23/69 |
| Claims | 13 total (independent: 1, 2, 9, 11) |
Assignment chain (Kodak → current): Eastman Kodak → Intellectual Ventures Fund 83 LLC (recorded Apr. 5, 2013, eff. Feb. 1, 2013) → Intellectual Ventures II LLC (Dec. 23, 2013) → back to IV Fund 83 (Jan. 27, 2017) → Monument Peak Ventures, LLC (Mar. 9, 2017). A security interest to Citicorp North America (2012) was released in 2013; IV Fund 83 released its interest to Monument Peak in Aug. 2023.
2. Abstract (as issued)
"A camera having a touch sensitive control with first and second positions spaced apart along a surface of the camera, and a shutter. A processor is connected to the touch sensitive control and the shutter, so that as a user slides a finger from the first to the second positions, the shutter is operated. The sliding shutter control inhibits vibration during picture taking while allowing a two-position shutter control. The touch sensitive control may particularly be a touch sensitive screen and icons controlling other camera functions can be presented thereon. These camera control icons can be re-positioned or re-sized on the screen to suit user preferences and/or physical limitations."
3. Plain-language overview of the four independent claims
Claim 1 — "Slide-to-shoot" shutter, generic touch control.
The broadest claim. Three elements only: (a) a touch-sensitive control on the camera with two positions spaced apart along a camera surface; (b) a shutter; (c) a processor wired to both. The claimed operation is that sliding a finger from the first position to the second position fires the shutter. Note it covers a touch-sensitive control generally — it is not limited to a screen, and not limited to a displayed icon.
Claim 2 — Same idea, but the control is a touch screen.
Identical structure to Claim 1 except element (a) is specifically a touch-sensitive screen. Since the two positions are not tied to a drawn icon in this claim, it is broad with respect to how the first/second positions are presented.
Claim 9 — On-screen zoom slider.
A camera with a touch screen, a multi-position zoom lens control, and a processor that displays a zoom icon having a first position, a second position, and one or more intermediate positions. Touching a given spot on the icon selects the corresponding zoom setting — i.e., jump directly to a focal length rather than repeatedly hitting tele/wide buttons.
Claim 11 — User-reconfigurable control icons (position and/or size).
A camera with a touch screen, a camera control (any camera function), and a processor that displays the corresponding control icon at different user-selectable positions or sizes on the screen, so touching the icon operates that function. This is the claim that captures the customizable-interface idea (the spec's FIG. 5 repositioning and FIG. 7 resizing).
Dependent-claim context (for completeness): Claims 3–8 depend from Claim 2 and add: shutter icon display with first/second icon positions (3); sensor-driven picture-taking-parameter computation on first-position touch, i.e., the "half-press" analog (4); user warning indicator or shutter disable when a parameter falls outside a preselected value (5); reset of those parameters if the finger moves somewhere other than the second position (6); shutter icon repositionable (7); and a dedicated icon-positioning mode (8). Claim 10 depends on Claim 9 and adds zoom rate proportional to sliding-motion rate. Claims 12–13 depend on Claim 11 and add an icon positioning/sizing mode (12) and a list of eligible camera controls — shutter, aperture, flash, film position (load/rewind/advance), power, captured-picture-format, and zoom (13).
4. Litigation history found (family-level, from Google Patents' litigation data)
Three US district-court cases are flagged for the family:
- D. Del. 1:18-cv-00416
- W.D.N.Y. 6:20-cv-06263 — docket copy shows this is Xerox Corporation v. Monument Peak Ventures LLC, and the complaint attaches the '908 patent as Exhibit 1 (a declaratory-judgment posture, i.e., an accused-infringer filing first).
- E.D. Tex. 4:21-cv-00683 — flagged "Critical" by the source.
No CAFC appeal docket number appeared for this patent in my searches.
5. Uncertainty flags
- Current assignee: I report Monument Peak Ventures, LLC because that is the listed assignee and the last recorded assignment (Mar. 9, 2017) plus a 2023 release of a secured party's interest. I cannot confirm present-day ownership beyond the public assignment record.
- CAFC 2026 activity: not found; do not treat as confirmed nonexistent.
- Claim construction / invalidity rulings: I have no authoritative record of any court construing these claims; none located in this search.
- Cited art of note: 12 US patent references (including Kodak's own US 4,827,347 and US 5,408,287) plus a non-patent citation to Parts of the Nikon Coolpix 300 (pp. 5, 6, 8, 28, 30, 32 — photograph, anonymous, date unknown). If you need the exact face-page examiner names, I did not obtain them in full and will not guess.
Generated 9/29/2026, 2:41:18 PM
Cases on file (2)
Group view →Specific litigation cases in our database that name US patent 5923908. The free-form analysis below may also discuss cases beyond this list.
- Xerox Corporation v. Monument Peak Ventures, LLCfiled Apr 23, 20206:20-cv-06263U.S. District Court for the Western District of New Yorkterminated Aug 31, 2021transferred
Defendants: Monument Peak Ventures, LLC
Other patents asserted: 6873336, 6157436, 6215559, 6396599, 7006890, 7092966, 7684090
- Monument Peak Ventures, LLC v. GoPro, Inc.filed Mar 16, 20181:18-cv-00416U.S. District Court for the District of Delawareterminated Aug 22, 2018closed
Defendants: GoPro, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US 5,923,908. Let me run several searches.
Let me search for the specific case numbers and parties referenced in the patent record.
I hit my tool-call limit, but I gathered enough to answer. Below is what I could verify for US 5,923,908 ("Camera with touch sensitive control," Schrock et al., Eastman Kodak, filed Oct. 30, 1997, issued July 13, 1999). I've flagged where my confidence is lower.
Litigation involving US 5,923,908
The Google Patents record for US 5,923,908 (the authoritative text you provided) lists three U.S. district court cases under "Family has litigation." Resolving those docket links to actual cases:
1. Xerox Corporation v. Monument Peak Ventures, LLC
- Court/Jurisdiction: U.S. District Court for the Western District of New York (W.D.N.Y.), later transferred to the Eastern District of Texas (E.D. Tex., Judge Sean D. Jordan)
- Case numbers: W.D.N.Y. 6:20-cv-06263; after transfer (Aug. 31, 2021) E.D. Tex. 4:21-cv-00683
- Filed: April 23, 2020 (W.D.N.Y.)
- Parties: Plaintiff Xerox Corporation (declaratory-judgment plaintiff / accused infringer); Defendant Monument Peak Ventures, LLC (MPV), an Intellectual Ventures/NPE successor to Eastman Kodak's patent portfolio
- Patents: Complaint for declaratory judgment of non-infringement of eight MPV patents — U.S. 5,923,908 (listed as Exhibit 1), plus U.S. 6,157,436; 6,215,559; 6,396,599; 6,873,336; 7,006,890; 7,092,966; and 7,684,090
- Outcome/status: MPV moved to dismiss for lack of personal jurisdiction (June 29, 2020). The court (Judge Frank P. Geraci, Jr.) initially denied dismissal (Aug. 18, 2020), allowed jurisdictional discovery, then on Aug. 31, 2021 ordered the case transferred to E.D. Tex. Closed — Xerox filed a notice of voluntary dismissal without prejudice on Sept. 1, 2021. So the '908 patent was the subject of a DJ action, but the case was dismissed rather than adjudicated on the merits.
- Sources: https://dockets.justia.com/docket/texas/txedce/4:2021cv00683/[208971](/patent/208971) ; https://www.docketalarm.com/cases/New_York_Western_District_Court/6--20-cv-06263/ ; https://unicourt.com/case/pc-db5-xerox-corporation-v-monument-peak-ventures-llc-[1006270](/patent/1006270) ; https://ai-lab.exparte.com/case/dct/nywd/6:20-cv-06263/xerox-corp-v-monument-peak-ventures-llc ; https://portal.unifiedpatents.com/litigation/New%20York%20Western%20District%20Court/case/6:20-cv-06263
Related case (context, not confirmed to involve the '908 patent): The same day Xerox voluntarily dismissed its DJ action, MPV filed an offensive suit, Monument Peak Ventures, LLC v. Xerox Corporation, 2:21-cv-00345 (E.D. Tex.), asserting six MPV patents (confirmed to include the '090 patent; I could not confirm whether '908 was among the six). Related IPRs were filed on other MPV patents (e.g., IPR2022-00318 on 7,684,090), and that IPR ended in settlement (joint motion to terminate, June 2022).
2. Monument Peak Ventures, LLC v. GoPro, Inc.
- Court/Jurisdiction: U.S. District Court for the District of Delaware
- Case number: 1:18-cv-00416
- Filed: March 16, 2018; terminated: Aug. 22, 2018
- Parties: Plaintiff MPV; Defendant GoPro, Inc.
- Cause of action: Willful patent infringement (35 U.S.C. § 271); jury demanded
- Patents: This case asserted multiple MPV patents (RPX lists ~5 patents-in-suit). I could not independently confirm that US 5,923,908 was one of the asserted patents — but Google Patents links this docket to the '908 family, so it is at least associated with the case.
- Outcome/status: Closed (terminated ~5 months after filing, consistent with a quick settlement or dismissal).
- Sources: https://dockets.justia.com/docket/delaware/dedce/1:2018cv00416/64771 ; https://insight.rpxcorp.com/litigation/dedce-64771-monument-peak-ventures-v-gopro
3. Texas Eastern District Court case 4:21-cv-00683
- This is the post-transfer number of the Xerox v. MPV declaratory-judgment action described in item 1 above (same case, not a separate lawsuit).
Important caveats
- No offensive assertion suit by MPV on the '908 patent alone surfaced in my search. The '908 patent appears as an exhibit/patent-in-suit in Xerox's defensive DJ action, i.e., Xerox sued MPV to preempt MPV's infringement claims — it was not MPV suing a camera maker over '908.
- I found no PTAB (IPR/PGR/CBM) proceeding directed at US 5,923,908. The MPV-related IPRs I saw (e.g., IPR2019-01029 on 7,212,668; IPR2019-01472 on 6,282,317; IPR2022-00318 on 7,684,090) concern other MPV patents, not '908.
- Confidence limits: I could not pull the full docket sheets/outcomes for the GoPro case or confirm '908's exact role in it, and I could not retrieve litigation-outcome data beyond the "closed" status. Verify against PACER/RPX before relying on any of the above as a legal conclusion.
- Assignee/standing note: the '908 patent passed Eastman Kodak → Intellectual Ventures Fund 83 LLC (2013) → Intellectual Ventures II LLC (2013) → Intellectual Ventures Fund 83 LLC (2017) → Monument Peak Ventures, LLC (2017), which is why MPV is the plaintiff/patent owner in these matters.
Bottom line: Three docket entries are tied to US 5,923,908 — Xerox v. Monument Peak Ventures (W.D.N.Y. 6:20-cv-06263 → E.D. Tex. 4:21-cv-00683, voluntarily dismissed 9/1/2021) and Monument Peak Ventures v. GoPro (D. Del. 1:18-cv-00416, terminated 8/22/2018). No merits judgment on the '908 patent was reached in either.
Generated 9/29/2026, 2:41:28 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: Xerox Corporation
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll verify the structured-data default against live sources before writing this up.
PTAB Proceedings — US 5,923,908 ("Camera with Touch Sensitive Control")
Proceedings overview
Zero AIA trial proceedings on file. The structured USPTO Open Data Portal block for US 5,923,908 lists no IPR, PGR, or CBM — no institution, no FWD, no settlement, no denial — giving a defendant the cleanest possible posture: there is nothing to distinguish, nothing to estop, and no adverse PTAB record to work around, because the patent's entire validity history is un-adjudicated at the Board and the patent — filed 1997-10-30, granted 1999-07-13 — reached its anticipated expiration on 2017-10-30 and is now "Expired - Lifetime."
I could not identify any AIA proceeding against this patent, and I am telling you that as an absence of evidence rather than affirmative proof. Searches against the patent number, the title, the assignee (Monument Peak Ventures / Intellectual Ventures / Eastman Kodak), and the petitioner names I would expect to see (Xerox, GoPro) surfaced no petition, institution decision, FWD, or Board docket entry naming the '908 patent. If a recently-filed petition has not yet propagated to public sources, that is the only scenario that would displace this conclusion — and given the patent expired nine years ago, it is an unlikely one.
Because there are no proceedings, the per-proceeding template has no entries. What follows instead is the surrounding record that a defendant actually needs.
Evidence behind the "no proceedings" finding
| Source | What it shows |
|---|---|
| Structured "PTAB proceedings on file" block (USPTO ODP) | No AIA trial proceedings listed for US 5,923,908 |
| Google Patents — US5923908A | "Family has litigation" lists three district court cases; no PTAB/appeal section; status "Expired - Lifetime," anticipated expiration 1997-10-30 + 20 yrs |
| Unified Patents litigation portal — 4:21-cv-00683 (E.D. Tex.) | District court case only |
| Unified Patents litigation portal — 6:20-cv-06263 (W.D.N.Y.) | District court case only |
| Unified Patents litigation portal — 1:18-cv-00416 (D. Del.) | District court case only |
The litigation record that sits where PTAB proceedings normally would
Three district court matters are associated with the '908 patent. None produced a PTAB outcome.
- MPV v. GoPro, Inc., 1:18-cv-00416 (D. Del.) — filed 2018-03-16, terminated 2018-08-22. Monument Peak's March 2018 assertion wave over the former Kodak camera portfolio. GoPro resolved quickly; this is a short-lived assertion, not a merits adjudication.
- Xerox Corp. v. Monument Peak Ventures, LLC, 6:20-cv-06263 (W.D.N.Y.) — a declaratory judgment action for non-infringement filed by Xerox, naming US 5,923,908 alongside seven other former-Kodak patents (the '436, '559, '599, '336, '890, '966, and '090 patents). Xerox's complaint characterized MPV as a Dominion Harbor–associated patent assertion entity "trying to stretch the scope of these camera related patents to cover Xerox's printer devices." A copy is publicly available via the PTAB record in a sibling proceeding: IPR2022-00318, Ex. 1030 (W.D.N.Y. complaint).
- E.D. Tex. 4:21-cv-00683 — per the structured block, filed 2021 and flagged "Critical."
Important negative finding worth flagging: Xerox did petition the Board against sibling MPV patents. In IPR2022-00318 Xerox challenged claims 1–3, 5, 7, and 10 of US 7,684,090 — a different patent in the same Kodak-origin family — and its mandatory notices cite the same W.D.N.Y. and E.D. Tex. campaigns. That is a meaningful data point: a well-funded, motivated adversary litigated this portfolio and chose not to file on the '908. The most plausible explanation is economic, not technical — see below.
Strategic summary
Claim status: all 13 claims UNTESTED. No claim of US 5,923,908 has been canceled, confirmed, or even construed by the Board, because no petition was ever filed. Claim 1 (touch-sensitive control with first/second spaced-apart positions + processor + slide-to-fire shutter), claim 2, claim 3, claims 4–8, claim 9 (zoom icon with intermediate positions), claim 10 (slide-rate-to-zoom-rate), and claims 11–13 (re-positionable/re-sizeable control icons) all stand exactly as issued — but only in the narrow sense that no administrative body has struck them. They are untested, not hardened, and untested is not the same as strong.
Estoppel landscape: essentially empty, in both directions. Section 315(e)(2) estoppel only attaches to a petitioner that obtained an institution decision. Because no IPR was ever instituted, no party is estopped from anything on this patent, and no ground is foreclosed. If a defendant today wanted to run an IPR, PGR, or ex parte reexamination on the '908, the full universe of prior art remains available — including art that a hypothetical earlier petitioner raised or reasonably could have raised. The Board's own citation of the Nikon Coolpix 300 materials (listed as a non-patent citation in the file) and the § 103-ripe pre-1997 touchscreen art described in the specification's own background section (U.S. Pat. Nos. 4,827,347; 5,408,287; 4,247,188; 4,199,245) all suggest the claim set was always vulnerable. That vulnerability has simply never been cashed in.
Pattern signals — and the reason an IPR never made sense. MPV is a serial assertion entity operating out of the former Intellectual Ventures Fund 83 / Eastman Kodak portfolio, with a distinctive "assert broadly, settle quickly" playbook. The GoPro matter (D. Del., dismissed in five months) and MPV's related campaigns against Kyocera (2:23-cv-00127, dismissed with prejudice 2023-12-14), TP-Link (6:22-cv-01250, settled 2023-10-31 under a "Settlement and License Agreement"), and Vivotek (6:24-cv-00361, dismissed with prejudice pre-answer) all follow the same nuisance-value template. Unified Patents has run PATROLL crowdsourcing contests against MPV patents, but the contests I can identify target other MPV assets (e.g., US 7,187,858, US 8,305,452-adjacent art), not the '908. The absence of any IPR here is best explained by timing: the earliest assertion appears to be the March 2018 GoPro filing, roughly five months after the patent's 2017-10-30 expiry. With the patent already dead, an IPR offered no upside — the Board cannot cancel claims to which no enforceable right attaches, and a defendant's cheaper path was declaratory judgment or simply refusing to pay.
Recommended next steps
If you are a defendant, the expiration argument comes before any validity argument. US 5,923,908 expired on 2017-10-30 — 20 years from its 1997-10-30 filing — and the structured data confirms status "Expired - Lifetime." Combined with the 35 U.S.C. § 286 six-year damages look-back, this creates a zero-recovery ceiling that requires no PTAB proceeding at all:
- Conduct after 2017-10-30 does not infringe an expired patent.
- A complaint filed on or after 2026-09-29 reaches back only to 2020-09-29 under § 286.
- The two windows do not overlap. There is no period in which both infringement and recoverable damages exist.
Demand a damages model with actual dates in it. If a demand letter asserts ongoing royalties or forward-looking licensing, say plainly that the patent expired nine years ago and there is no forward-looking right to license.
You do not need PTAB relief, but you have an unusually clean forum if you want it. Because no prior petition exists, no § 315(e)(2) estoppel constrains anyone, and no § 315(b) one-year bar has been triggered by service in an earlier action (though you should still confirm your own service date and any privity). If counsel wants a cancelation order on the record — useful for licensing negotiations or to moot a co-defendant — an ex parte reexamination under § 302 is likely the cheaper and lower-risk vehicle than an IPR for an expired patent, since the Board applies Phillips-style claim construction to expired claims and there is no patent owner preliminary response to survive.
If you represent a patent owner, be candid about the record. The 2018 GoPro, 2020 Xerox, and 2021 E.D. Tex. matters referenced here are litigation, not PTAB outcomes, and none of them adjudicated validity. Do not let any opponent's filing imply the patent was "upheld" — no tribunal has upheld it, and no tribunal has struck it. Both directions of that inference are unsupported by the record.
Caveat on completeness. The USPTO ODP block is the canonical list; PTAB E2E and Docket Alarm would be the confirming second sources if you need a formal clearance opinion. My searches of public web sources did not surface a proceeding, and the Google Patents family page for US5923908A shows no PTAB or Federal Circuit entries — consistent with, but not a substitute for, an E2E docket check under 37 C.F.R. § 42.6.
Generated 9/29/2026, 2:41:32 PM
Ownership chain (8)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
1997-10-30 · reel 008801/0977 · Assignment
2012-02-15 · recorded 2012-02-21 · reel 028201/0420 · Security Agreement
Eastman Kodak Company; Pakon, Inc.Citicorp North America, Inc., as Agent
securitization
2013-02-01 · reel 029913/0001 · Release
Citicorp North America, Inc.; Wilmington Trust, National AssociationEastman Kodak Co. and ~18 Kodak affiliates (Pakon, NPEC, FPC, Qualex, Kodak Americas, Lasers-Pacific, et al.)
bankruptcy
2013-02-01 · recorded 2013-04-05 · reel 030158/0327 · Assignment
Eastman Kodak CompanyIntellectual Ventures Fund 83 LLC
fire-sale
2013-12-20 · recorded 2013-12-23 · reel 031840/0750 · Assignment
Intellectual Ventures Fund 83 LLCINTELLECTUAL VENTURES II LLC
internal reorg
2016-12-20 · recorded 2017-01-27 · reel 041113/0463 · Assignment
INTELLECTUAL VENTURES II LLCIntellectual Ventures Fund 83 LLC
internal reorg
2017-02-15 · recorded 2017-03-09 · reel 041941/0079 · Assignment
Intellectual Ventures Fund 83 LLCMonument Peak Ventures, LLC
transfer-to-asserter
2023-07-28 · recorded 2023-08-15 · reel 064599/0304 · Release
Intellectual Ventures Fund 83 LLCMonument Peak Ventures, LLC
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment chain, litigation history, and correspondent details before compiling the report.
Substantial litigation data found. Let me pin down the specific suits naming the '908 patent and the Kodak/IV transaction details.
Assignment & Ownership Reconstruction — US 5,923,908 "Camera with touch sensitive control"
Patent: US 5,923,908 A | App. 08/960,822 | Filed: 1997-10-30 | Issued: 1999-07-13 | Status: Expired – Lifetime (anticipated expiration 2017-10-30; fee payments through yr. 12 in Dec 2010)
Family ID: 25503690 (single US member; no foreign siblings)
Assignee of record today: Monument Peak Ventures, LLC (Dallas, TX)
Inventors
| Inventor | Employer at filing | Evidence |
|---|---|---|
| Anthony W. Schrock | Eastman Kodak Company (Rochester, NY) | Co-assigns to Kodak on filing date via reel 008801/0977; patent aggregator profiles list 17 Kodak-assigned patents under his name |
| Paul E. Spencer | Eastman Kodak Company (Rochester, NY) | Co-assigns to Kodak on filing date via reel 008801/0977; profile lists 36 Kodak-assigned patents |
Pattern check: No unusual departure signal. Both inventors assigned to Kodak on the filing date (1997-10-30) — the standard employee-inventor instrument — and neither inventor name reappears anywhere later in the chain. This is an ordinary operating-company capture, not a startup-founder-holds-then-leaves pattern. (Caveat: US assignments are recorded against the patent, not the inventor, so I cannot prove tenure past 1999 from these records; I found no contrary evidence.)
Original assignee
Eastman Kodak Company (a New York corporation, Rochester, NY).
- Line of business: photography — film, cameras, and later digital cameras. The patent itself is squarely within Kodak's core business (a camera whose rear LCD/touch screen serves as the user interface, with a "touch-and-slide" shutter icon; the spec even incorporates-in a Kodak stylus-annotation application, Ser. No. 08/808,702 → US 5,845,161).
- Product embodying the claims: Unclear / not established. Kodak commercialized touchscreen-interface digital cameras, but I found no record tying a shipped Kodak product to claims 1–13 of the '908 patent. The cited prior art in the specification is the Nikon Coolpix 300 — not a Kodak product.
- Current status: Chapter 11 bankruptcy. Kodak filed Chapter 11 in January 2012 and sold its digital-patent portfolio during the reorganization. The '908 was part of that court-ordered sale (see timeline, 2013-02-01). Kodak emerged and today operates as a commercial-print/advanced-materials company — it is no longer a camera business.
Assignment timeline
Every recorded instrument I could verify is listed. Reel/frame values are as published in the patent's legal-events record.
1997-10-30 (executed) / recorded 1997-10-30 — Reel 008801/0977
- Conveyance: Assignment (Assignment of Interest)
- Assignor: Anthony W. Schrock; Paul E. Spencer
- Assignee: Eastman Kodak Company, New York
- Correspondent: Not exposed in the mirrored record I retrieved. The corresponding USPTO Assignment Center detail page carries a correspondent field; the Google Patents legal-events mirror does not publish it. I will not fabricate a name.
- Context: Original employment capture — inventors assign to their employer on the filing date.
2012-02-15 (executed) / recorded 2012-02-21 — Reel 028201/0420
- Conveyance: Security Interest (Security Agreement)
- Assignor: Eastman Kodak Company; Pakon, Inc.
- Assignee: Citicorp North America, Inc., as Agent
- Correspondent: Not exposed in the mirrored record.
- Context: Securitization / collateral — Kodak's Chapter 11-era secured financing packaging Kodak and Pakon patents as collateral. Does not transfer title.
2013-02-01 (executed) / recorded 2013-02-01 — Reel 029913/0001
- Conveyance: Patent Release (Release by Secured Party)
- Assignor: Citicorp North America, Inc.; Wilmington Trust, National Association
- Assignee (released parties): Eastman Kodak Co. and ~18 Kodak affiliates (Pakon, NPEC, FPC, Qualex, Kodak Americas, Lasers-Pacific, et al.)
- Correspondent: Not exposed in the mirrored record.
- Context: Lien clearance immediately before the portfolio sale — the same-day release of the 2012 security interest is what made clean title pass to IV (below).
2013-02-01 (executed) / recorded 2013-04-05 — Reel 030158/0327
- Conveyance: Assignment
- Assignor: Eastman Kodak Company
- Assignee: Intellectual Ventures Fund 83 LLC, Nevada
- Correspondent: Not exposed in the mirrored record.
- Context: Chapter 11 bankruptcy fire-sale. This is the Kodak court-ordered digital-patent sale (the ~1,000+ Kodak patents bought by the IV-led consortium, closed early 2013); execution date 2013-02-01 matches the lien release.
2013-12-20 (executed) / recorded 2013-12-23 — Reel 031840/0750
- Conveyance: Assignment
- Assignor: Intellectual Ventures Fund 83 LLC
- Assignee: Intellectual Ventures II LLC, Delaware
- Correspondent: Not exposed in the mirrored record.
- Context: Internal IV reorg — moving the asset into an IV prosecution/assertion vehicle. Title only; no third party.
2016-12-20 (executed) / recorded 2017-01-27 — Reel 041113/0463
- Conveyance: Assignment
- Assignor: Intellectual Ventures II LLC
- Assignee: Intellectual Ventures Fund 83 LLC, Nevada
- Correspondent: Not exposed in the mirrored record.
- Context: Internal IV reorg / pre-sale consolidation — title moved back to the Fund 83 entity roughly six weeks before the Dominion Harbor sale (below). Classic pre-transaction clean-up.
2017-02-15 (executed) / recorded 2017-03-09 — Reel 041941/0079
- Conveyance: Assignment
- Assignor: Intellectual Ventures Fund 83 LLC
- Assignee: Monument Peak Ventures, LLC, Texas
- Correspondent: Not exposed in the mirrored record.
- Context: Transfer to asserter. MPV is the Dominion Harbor Enterprises, LLC monetization vehicle — court filings describe it as "one of a vast array of patent assertion entities associated with Dominion Harbor Enterprises, LLC… It does not exist to invent new ideas, make products or provide services to consumers."
2023-07-28 (executed) / recorded 2023-08-15 — Reel 064599/0304
- Conveyance: Release by Secured Party
- Assignor of record: Intellectual Ventures Fund 83 LLC (as reflected in the legal-events entry)
- Assignee / owner of record: Monument Peak Ventures, LLC, Texas
- Correspondent: Not exposed in the mirrored record.
- Context: Lien/encumbrance clearance only. Note a directional oddity: the mirrored entry shows IV Fund 83 in the assignor slot with MPV as owner. Most consistent reading is that a security interest/M&A-side encumbrance running between the 2017 seller (IV Fund 83) and the buyer (MPV) was discharged; it is not a transfer of title back to IV. MPV remains the owner of record. Flagging this rather than over-reading it.
Correspondent field — explicit limitation: The Assignment Center exposes the recording attorney/agent per reel/frame, but that field is not contained in the mirrored legal-events data I retrieved, and I could not pull the individual detail pages before exhausting my retrieval budget. I therefore report correspondent as "not exposed / unverified" on all eight instruments rather than guess. This is the one element of your requested schema I could not populate from primary sources. (See signal 3, below, for the litigation-counsel proxy — clearly labeled as not the same thing.)
Timeline diagram
timeline
title Ownership of US 5923908
1997 : Filed Oct 30 by Schrock and Spencer
: Assigned to Eastman Kodak reel 008801 0977
1999 : Patent issues July 13
2012 : Kodak grants security interest reel 028201 0420
: Kodak files Chapter 11
2013 : Lien released reel 029913 0001
: Kodak sells to IV Fund 83 reel 030158 0327
: IV Fund 83 to IV II LLC reel 031840 0750
2016 : IV II LLC back to IV Fund 83 reel 041113 0463
2017 : Sold to Monument Peak Ventures reel 041941 0079
2018 : First MPV infringement suit filed
2020 : Xerox DJ action names the 908 patent
2021 : MPV sues Xerox in EDTX
2023 : Encumbrance released reel 064599 0304
NPE / troll-pattern signals
1. Shell-entity transfer — PRESENT.
Title moved from Eastman Kodak (operating camera maker) to Intellectual Ventures Fund 83 LLC (reel 030158/0327) and then to Monument Peak Ventures, LLC (reel 041941/0079), a licensing-only vehicle. Corroboration beyond the name: MPV is pleaded in a competitor's complaint as an entity that "does not exist to invent new ideas, make products or provide services to consumers," and is identified in the same pleading as "one of a vast array of patent assertion entities associated with Dominion Harbor Enterprises, LLC." Delaware Chancery-style formation exhibits for sister entities — Monument Patent Holding, Liberty Peak Ventures, DH Enterprises — appear in the Xerox litigation (Patexia docket for Xerox Corp. v. Monument Peak Ventures, 6:20-cv-06263). MPV's recorded address is a Dallas office suite (200 Crescent Court, Suite 1550, Dallas, TX 75201); the court record also cites a Plano, TX principal place of business — i.e., a moved nominal address, not a plant.
2. Known asserter in the chain — PRESENT (two independent hits).
- Intellectual Ventures (Fund 83 LLC, 2013–2017): on your enumerated NPE list.
- Monument Peak Ventures / Dominion Harbor Enterprises (2017–present): classified by Unified Patents as "NPE (Patent Assertion Entity)" and by the Stanford NPE Litigation Database as a patent asserter under "1 Acquired patents." Citational anchor: Unified Patents litigation entry for Monument Peak Ventures LLC v. Sensormatic Electronics LLC / Johnson Controls GMBH, 6:21-cv-01009 (W.D. Tex., filed 2021-09-29) — plaintiff entity type "NPE."
3. Repeat correspondent across the chain — UNVERIFIED (not a finding).
The correspondent/recording-attorney field for reels 008801/0977, 028201/0420, 029913/0001, 030158/0327, 031840/0750, 041113/0463, 041941/0079 and 064599/0304 could not be read from the sources I retrieved, so I cannot make the recurrence call your framework asks for. To be explicit about a tempting but invalid proxy: litigation counsel is not assignment correspondent. For completeness, and clearly labeled: Xerox Corp. v. Monument Peak Ventures, 2:21-cv-00345 (E.D. Tex.) lists MPV's plaintiffs' counsel as Cabrach John Connor / Jennifer Tatum Lee / John Michael Shumaker (Connor Lee PLLC), while in Robert Bosch LLC v. Monument Peak Ventures, IPR2019-01472, MPV's mandatory notices were signed by Tarek N. Fahmi, Ascenda Law Group, PC (Reg. No. 41,402). Two different firms appearing for the same NPE on different matters is the opposite of the "one lawyer runs the whole portfolio" tell, but this is litigation counsel and cannot be used to score signal 3 either way. Action item: pull the Assignment Center detail pages for the eight reel/frame pairs above and read the correspondent block.
4. Cascading transfers — PRESENT (moderate).
Three back-to-back recordings inside ~14 months — reel 031840/0750 (executed 2013-12-20), then reel 041113/0463 (executed 2016-12-20) and reel 041941/0079 (executed 2017-02-15, recorded 2017-03-09) — walk the asset through IV-II → IV-Fund-83 → MPV with only weeks between execution of the last two. This is portfolio-plumbing, and notably IV moved the patent back to the Fund 83 entity roughly six weeks before selling it to MPV, the signature of pre-transaction consolidation for a single buyer.
5. Pre-litigation transfer (≤6 months before first suit) — NOT PRESENT on the record I have.
The transfer to MPV was executed 2017-02-15 (recorded 2017-03-09); the earliest MPV filing I can place is 2018-03-16 (the Delaware action reported in the patent's own litigation tab as D. Del. 1:18-cv-00416, part of the MPV wave against GoPro/DJI/Hasselblad). That is ~13 months — outside your 6-month window. The '908 patent is then named in Xerox Corp. v. Monument Peak Ventures, No. 6:20-cv-6263 (W.D.N.Y., filed 2020-04-23), one of eight patents Xerox sought a DJ on, and in the transferred EDTX docket 4:21-cv-00683 where Xerox's exhibit list includes "U.S. Patent No. 5,923,908." So the asset was shelf-bought in 2017 and asserted in 2020–2021 — monetized on the asserter's timetable, but not conveyed inside the 6-month window.
6. Bankruptcy fire-sale — PRESENT.
Kodak's Chapter 11 (filed 2012-01-19) drove the sale: the 2012-02-15 secured-interest instrument (reel 028201/0420, Citicorp as agent) is collateral packaging; the 2013-02-01 release (reel 029913/0001) clears that lien; and the same-day 2013-02-01 assignment (reel 030158/0327) passes the patent to Intellectual Ventures Fund 83 LLC as part of the court-supervised sale of Kodak's digital-imaging portfolio to the IV-led group. This is exactly the Kodak-exemplar category in your prompt.
7. Privateering — NOT PRESENT (no evidence of operating-company sponsorship of the assertion).
The upstream transferor was Kodak in bankruptcy, and the assertion is run by Dominion Harbor's MPV, which pursued a broad camera/imaging campaign (GoPro, DJI, Hasselblad, Bosch, Sakar, Toshiba TABS, Xerox, Sensormatic/Johnson Controls, TP-Link, Vivint, Tesla). I found no SEC filing, EFF, or Patent Progress reporting tying Kodak to or funding MPV's enforcement. Absent that, do not score privateering.
8. Defensive aggregator at the end of the chain — NOT PRESENT.
The chain terminates at an asserting entity (MPV), not at RPX / AST / LOT / Unified / OIN. No neutralizing transfer appears in reel 064599/0304, which is a release of an encumbrance, not a conveyance to a defensive buyer.
Verdict
NPE — high confidence.
The chain shows at least three strong signals. (a) Bankruptcy fire-sale: a same-day lien release (reel 029913/0001) and assignment to IV (reel 030158/0327), both executed 2013-02-01, move the patent out of Eastman Kodak during its Chapter 11 — Kodak's own example category. (b) Shell-entity transfer to a licensing-only vehicle: reel 041941/0079 (executed 2017-02-15, recorded 2017-03-09) divests to Monument Peak Ventures, LLC, pleaded in court as a Dominion Harbor "patent assertion entity [that] does not exist to invent new ideas, make products or provide services." (c) Known asserter in the chain: both Intellectual Ventures (Fund 83/II, reels 031840/0750 and 041113/0463) and MPV appear on public NPE lists, MPV expressly classified as "NPE (Patent Assertion Entity)" by Unified Patents. The only gap in your checklist is the correspondent field, which the sources I could reach do not expose — I flag that as unverified rather than infer it, and it does not change the verdict, since signals 1, 2, 4 and 6 are independently supported by reel/frame and dates.
Verify at: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search patent 5923908; equivalent index at https://assignment.uspto.gov/patent/index.html). Read the correspondent block on reels 008801/0977, 028201/0420, 029913/0001, 030158/0327, 031840/0750, 041113/0463, 041941/0079, 064599/0304 to close out signal 3.
Generated 9/29/2026, 2:41:54 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll verify the prior-art references cited on the face of US 5,923,908 before mapping them to claims.
Let me verify the remaining cited references, including the two-position shutter art and the Nikon Coolpix 300 non-patent reference.
Prior-Art Analysis — US 5,923,908 ("Camera with touch sensitive control")
Scope note / build on prior section. The bibliographic record, ownership chain, claim overview and litigation trails were covered in the previous section and are not repeated here. This section addresses only the task at hand: searching the face record of US 5,923,908 (application 08/960,822, filed 1997-10-30, issued 1999-07-13, Eastman Kodak) and mapping each of its 12 cited U.S. patent references + 1 non-patent citation to the claims under 35 U.S.C. § 102.
Legal framework (pre-AIA). Because the '908 application was filed 1997-10-30, pre-AIA § 102 governs. Practically:
- References published before 1997-10-30 are § 102(b) art (with § 102(a) available for earlier art).
- US 5,689,742 issued 1997-11-18 — after the '908 filing date — so it can only be § 102(e) art (U.S. patent granted on an application filed before the '908 filing), not § 102(a)/(b).
- Anticipation requires a single reference to disclose every element of the claim. None of these 12 references discloses the signature "slide from first position to a spaced-apart second position" limitation, so my honest conclusion (detailed below) is that no cited reference anticipates independent claims 1, 2, 9 or 11; several are strong obviousness (§ 103) references instead.
A. Summary ranking (most → least relevant)
| Rank | Reference | Primary relevance | § 102 status |
|---|---|---|---|
| 1 | Nikon Coolpix 300 (NPL) | Touch-screen camera w/ touch-triggered shutter icon (but no two-position/slide) | Non-patent; § 102(a)/(b) if dated |
| 2 | US 4,247,188 (Minolta) | Finger-touch release triggers exposure computation; two-stage release | § 102(b) |
| 3 | US 4,827,347 (Kodak) | Electronic camera with touch-sensitive screen overlay | § 102(b) |
| 4 | US 5,541,656 (Logitech) | Digital camera with LCD function/option icons | § 102(b) |
| 5 | US 5,408,287 (Kodak) | User-selectable (right/left) shutter-button location | § 102(b) |
| 6 | US 4,827,347 → see above; US 5,461,453 (Nikon) | Eye-detection photo-taking order (non-button release) | § 102(b) |
| 7 | US 4,521,927… US 4,529,291, US 4,697,898, US 5,218,399, US 4,206,990, US 4,199,245, US 3,599,548 | Background (display, exposure, power, mechanical release) | § 102(b) |
| 8 | US 5,689,742 (Kodak) | Full-frame annotation (camera + stylus annotation) | § 102(e) only |
B. Reference-by-reference analysis
1. US 3,599,548 A — "Release means for photographic apparatus"
- Assignee/inventor: Agfa-Gevaert AG
- Filed / Issued: 1969-04-15 / 1971-08-17 (§ 102(b))
- Description: A mechanical/electrical release mechanism for a photographic apparatus (shutter-release structure). It is cited as basic shutter-release art.
- Claims potentially anticipated: None. It predates the touch-control concept entirely. Relevant only as background for the "release means" field. (I could not retrieve the full text of this 1971 document in this session; the characterization above rests on the title and the '908 face record — flagged as unverified detail.)
2. US 4,199,245 A — "Power source switch for cameras"
- Assignee: Minolta Camera Kabushiki Kaisha
- Filed / Issued: 1977-08-19 / 1980-04-22 (§ 102(b))
- Description: Power-source switching for camera electronics. It is expressly cited in the '908 background as the art showing an electronic shutter release that reduces the force required for shutter activation ("It is well known in the art to use an electronic shutter release to reduce the force required for shutter activation, as described in U.S. Pat. No. 4,199,245").
- Claims potentially anticipated: None. It supports the "low-force release" motivation but discloses no touch control, no icon, and no slide-to-shoot. Background/§ 103 art only.
3. US 4,206,990 A — "Power supplying system for use in an automatic focusing camera"
- Assignee: Minolta Camera Kabushiki Kaisha
- Filed / Issued: 1977-10-05 / 1980-06-10 (§ 102(b))
- Description: Power supply/control for an automatic-focusing camera. Background art for the automatic-focus/exposure computation environment referenced in '908 claims 4–5.
- Claims potentially anticipated: None. No touch sensing, no display icons, no shutter slide.
4. US 4,247,188 A — "Automatic exposure camera" ⭐ (closest patent art)
- Assignee: Minolta Camera Kabushiki Kaisha
- Filed / Issued: 1976-08-10 / 1981-01-27 (§ 102(b))
- Description (verified from the document): Discloses a release button carrying a finger-touch responsive switch — two electrodes that, when merely touched by the photographer's finger (before any depression), turn on a semiconductor switch that energizes the light-measuring circuit, indicating circuit and storage circuit. A separate mechanical switch S1 is closed in the initial phase of depressing the release button (feeds light-measuring/indicating/storage circuits), and switch S2 is closed after S1 to fire the electromagnetic release → a two-stage (partial-press then full-press) release. The patent is explicitly the '908 background's example of "two position activation" art.
- Claims potentially anticipated:
- Claim 4 (touch at the first position → processor determines picture-taking parameters from sensor data) — arguably the strongest single-reference overlap, because the '188 touch-responsive switch energizes the light-measuring circuit on mere finger contact. But claim 4 depends from claim 2, which requires a touch-sensitive screen and a first/second position that the user's finger slides between. The '188 "touch" is capacitive finger contact on a button, not a positional touch surface, and there is no sliding shutter operation.
- Claims 1 and 2: No. Missing the "spaced-apart first and second positions on a camera surface" and the "slide to operate the shutter" elements.
- Claim 5 (user indicator/disable) — the '188 indicating circuit provides the "indicator" concept, but not in response to a parameter value outside a preselected value the way claim 5 recites; and the claim depends from claim 4/2.
- Bottom line: Best § 102(b) candidate against the dependent "touch triggers computation" concept, but it does not anticipate any independent claim; use as § 103 primary reference.
5. US 4,529,291 A — "Exposure mode control device for camera"
- Assignee: Canon Kabushiki Kaisha
- Filed / Issued: 1980-11-01 / 1985-07-16 (§ 102(b))
- Description: Camera exposure-mode selection/control electronics. Background art for mode selection (cf. '908 mode icon 29 / claims 8, 12).
- Claims potentially anticipated: None. No touch, no icons, no slide.
6. US 4,697,898 A — "Display device of a camera system"
- Assignee: Nippon Kogaku K.K. (Nikon)
- Filed / Issued: 1984-10-31 / 1987-10-06 (§ 102(b))
- Description: Camera-system display device. Background art for on-camera information display (cf. '908 FIG. 2 standard information display).
- Claims potentially anticipated: None. Display-only; no touch input, no reconfigurable icons.
7. US 4,827,347 A — "Electronic camera with proofing feature" ⭐
- Assignee: Eastman Kodak Company
- Filed / Issued: 1988-08-22 / 1989-05-02 (§ 102(b))
- Description (verified): An electronic camera with imaging means and a plurality of display/frame stores, each individually selectable by a transparent touch-sensitive medium (touch screen) positioned over the displays. Selection retains or discards the displayed image; retained images can be downloaded. The '908 background expressly cites this as the "touch screens with cameras … display is used to select images from a plurality of displayed images" art.
- Claims potentially anticipated:
- Claim 11 (touch screen + camera control + processor to display a control icon at different user-selectable positions or sizes) — the '347 supplies camera + touch screen + processor displaying selectable items, i.e., much of the structural preamble, but it does not disclose repositioning or resizing the icon (the heart of claim 11) and is directed to image selection rather than a camera-function control.
- Claims 1/2: No. No shutter, no slide between spaced positions.
- Claim 9: No. No zoom control.
- Bottom line: Important § 102(b) structural art for the "touch screen in a camera" preamble; not anticipatory.
8. US 5,218,399 A — "Display system for camera having segment display portion and dot matrix display portion"
- Assignee: Minolta Camera Kabushiki Kaisha (Izumi et al.)
- Priority / Filed / Issued: JP priority 1989-06-26; cited US application 07/784,064 filed 1991-10-30; issued 1993-06-08 (§ 102(b))
- Description (verified): Camera display combining a segment LCD and a dot-matrix LCD, driven at different duty ratios for legibility and power savings, plus an analog exposure-parameter scale. Display-only.
- Claims potentially anticipated: None. No touch sensing; relevant only as background for the two-part camera display of '908's touch screen. Could support a § 103 argument that dot-matrix camera displays (capable of arbitrary icons, cf. claims 3, 9, 11) were known.
9. US 5,408,287 A — "Switchable camera functions for right-hand and left-hand user actuated buttons" ⭐
- Assignee: Eastman Kodak Company (Winegarden & Petruchik)
- Filed / Issued: 1994-02-24 / 1995-04-18 (§ 102(b))
- Description (verified): A camera with symmetric left- and right-hand buttons; a microcomputer via a look-up table swaps the functions so the shutter release can be moved from the right side to the left side for left-hand use (selector bar 19 / switch SW). Cited in the '908 background as the "reconfigurable mechanical button" art.
- Claims potentially anticipated:
- Claims 7 and 8 (processor displays the shutter icon at different user-selectable positions, and a dedicated icon-positioning mode) — the '287 discloses the concept of a user-selectable control location, but mechanically (physical button relocation), not a touch-screen icon, and not a position mode on a screen. Does not anticipate.
- Claims 11/12: same reasoning — reconfigure-the-control is taught, but not via icon position/size on a touch screen.
- Bottom line: Strong § 103 combination partner with a touch-screen reference (e.g., '347 or the Coolpix 300) to attack the reconfigurable-icon claims. Not § 102 anticipatory.
10. US 5,461,453 A — "Apparatus for ordering to phototake with eye-detection"
- Assignee: Nikon Corporation
- Filed / Issued: 1990-08-20 / 1995-10-24 (§ 102(b))
- Description: Camera that issues a photo-taking command based on eye/gaze detection — a non-button, "intent-sensing" release.
- Claims potentially anticipated: None. Relevant only as background for the general idea that shutter actuation need not be a mechanical button press (motivation for claim 1's touch release). No touch screen, no slide.
11. US 5,541,656 A — "Digital camera with separate function and option icons and control switches" ⭐
- Assignee: Logitech, Inc. (Kare et al.)
- Filed / Issued: 1994-07-29 / 1996-07-30 (§ 102(b))
- Description (verified): Hand-held digital camera with a CCD, memory, communication port, and an LCD user interface bearing a plurality of selectable function icons and option icons. A first switch cycles among function icons; second/third switches cycle among options; a host command can disable a selectable function. Functions include flash, shutter delay, exposure offset, delete-image icons, etc.
- Claims potentially anticipated:
- Claim 11 (touch screen + camera control + processor displaying a camera control icon at different user-selectable positions or sizes) — the '656 supplies a digital camera whose display shows camera-function icons controlling camera functions (cf. also claim 13's list: flash control, etc.), but (i) the display is not touch-sensitive, (ii) the icons are at fixed positions selected by mechanical switches, and (iii) there is no repositioning/resizing. Does not anticipate.
- Claim 13 (control selected from shutter, aperture, flash, film position, power, format, zoom) — the '656 icons (flash, delay, exposure offset/delete) map onto several listed functions, but claim 13 depends from claim 11, whose touch/reposition limitations are unmet.
- Bottom line: Closest patent art for the "camera control icons on a camera display" concept; § 103 reference, not anticipatory.
12. US 5,689,742 A — "Full frame annotation system for camera"
- Assignee: Eastman Kodak Company
- Filed / Issued: 1996-10-11 / 1997-11-18 — § 102(e) only (issued after the '908 filing date)
- Description: Camera annotation system (related in subject matter to the stylus-annotation feature the '908 spec incorporates by reference — U.S. app. Ser. No. 08/808,702, now U.S. Pat. No. 5,845,161).
- Claims potentially anticipated: None. It concerns annotating images, not touch-screen shutter/zoom/icon control. Because it post-dates the '908 filing, it is usable only under § 102(e), and only if the '908 claims read on its disclosure — which they do not.
13. Non-Patent Citation — Parts of the Nikon Coolpix 300 (pp. 5, 6, 8, 28, 30, 32; photograph, anonymous, date unknown) ⭐⭐ (closest overall)
- Type / date: Printed publication/photograph; the face record lists "Date unknown." For § 102 purposes its effective date would have to be established by extrinsic evidence; the camera is generally placed in 1997.
- Description (from the '908 background, which the patent itself characterizes): The Nikon Coolpix 300 digital camera uses a touch-screen display as the user interface. It has (a) a conventional two-position shutter release button and (b) a touch-triggered shutter activation from a permanent icon adjacent to the display screen. The '908 patent expressly states that this second shutter release "does not have a two position activation, so there is no means to use the partial activation."
- Claims potentially anticipated:
- Claims 2 and 3 (touch screen + shutter + shutter-icon first/second positions) — this is the nearest single reference, because it discloses a camera with a touch screen and a touch-actuated shutter. However, the touch shutter lacks the two spaced-apart positions and the slide-from-first-to-second operation, and its touch shutter is a permanent physical icon adjacent to (not reconfigurable on) the screen. So it does not anticipate claims 2 or 3 as written.
- Claims 1, 9, 11: No.
- Bottom line: The single most pertinent piece of prior art to the '908 touch-shutter invention and the reference the applicants had to distinguish; because of the express absence of two-position/sliding operation, it fails § 102 and instead frames the § 103 inquiry.
C. Anticipation bottom line
| '908 claim | Any cited reference anticipating? | Closest reference(s) | Why it fails § 102 |
|---|---|---|---|
| 1 | No | Coolpix 300; US 4,247,188 | No "spaced-apart 1st/2nd positions + slide" |
| 2 | No | Coolpix 300; US 4,827,347 | Touch screen shown, but no slide-to-shoot |
| 3 | No | Coolpix 300 | Icon shown, but not two-position/slidable |
| 4 | No (arguable overlap) | US 4,247,188 | Touch-triggers-computation shown, but no touch screen/positions |
| 5 | No | US 4,247,188 | Indicator concept only |
| 6 | No | — | Reset-on-move not shown |
| 7 | No | US 5,408,287; Coolpix 300 | Mechanical relocation, not a screen icon |
| 8 | No | US 5,408,287 | No on-screen positioning mode |
| 9 | No | US 5,541,656 | No zoom slider icon |
| 10 | No | — | Slide-rate-to-zoom-rate not shown |
| 11 | No | US 4,827,347; US 5,541,656 | No reposition/resize of icon |
| 12 | No | US 5,408,287 | Mechanical, not touch-screen icon mode |
| 13 | No | US 5,541,656 | Depends on 11 |
Key takeaway: The cited art establishes, piecemeal, every environmental element of the '908 claims — a camera with a touch screen (US 4,827,347; Coolpix 300), camera LCD function icons (US 5,541,656), a user-relocatable shutter control (US 5,408,287), touch-triggered exposure computation (US 4,247,188), and camera displays (US 4,697,898; US 5,218,399). What none of them shows — and what appears to have carried the allowance — is the combination of (i) a touch-sensitive control with two spaced-apart positions and (ii) sliding the finger from the first to the second position to fire the shutter, together with the derivative reconfigurable shutter/zoom icons (claims 3–12). Accordingly, the realistic invalidity theory for the '908 is § 103 obviousness (e.g., Coolpix 300 or US 4,827,347 in view of US 4,247,188 and/or US 5,408,287), not § 102 anticipation.
D. Uncertainty flags (per operating rules)
- USPTO-direct vs. mirrored record: I verified the cited-reference list against the patent's face/description record (Google Patents mirror of the USPTO record) rather than a live Patent Public Search export; the 12 U.S. references and the Coolpix 300 NPL match the record shown in the source text provided to me.
- US 3,599,548 (Agfa-Gevaert): I could not retrieve its full text this session; the one-line characterization rests on the title and the '908 face record and is unverified.
- Coolpix 300 NPL date: the face record states "Date unknown." Any § 102(a)/(b) reliance requires extrinsic proof of publication; I did not establish that here.
- US 5,689,742: classified above as § 102(e) because it issued 19 days after the '908 filing date. If a different (earlier) publication/priority event can be shown, the analysis would change.
- Claim-mapping characterizations (e.g., whether the Coolpix 300's icon is "adjacent to" vs. "on" the screen) are drawn from the '908 patent's own background description of that product, not from independent inspection of the Nikon materials.
- I express no opinion on invalidity or unenforceability, and none of the above is legal advice.
Generated 9/29/2026, 2:42:14 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll ground this analysis by verifying the content of the key examiner-cited references before mapping them to the claims.
Let me verify two more cited references whose content could bear directly on the "slide-to-shoot" limitation and on the touch-screen camera UI.
Obviousness Analysis — US 5,923,908 under 35 U.S.C. § 103
Scope note / record used. Per the instructions, I base this on the Prior Art section of the US 5,923,908 page — i.e., the 12 examiner-cited U.S. patents and the single non-patent citation (Parts of the Nikon Coolpix 300, pp. 5, 6, 8, 28, 30, 32). I verified the substantive disclosures of five key references by fetching them (linked below); for the remainder I flag what is inferred from title/subject matter rather than confirmed. This builds on — and does not repeat — the earlier summary and litigation sections.
Date flag (contradiction). The system header states today is 2026-09-29; the task block states April 26, 2026. I flag the inconsistency but it does not affect a 1997-priority § 103 analysis.
Legal framework. The application was filed Oct. 30, 1997, so pre-AIA 35 U.S.C. § 103(a) applies. The governing test is Graham v. John Deere (scope/content, differences, PHOSITA level, secondary considerations) as liberalized by KSR Int'l v. Teleflex (2007): a combination is obvious where the improvement is a predictable variation, a known technique applied to a known device ready for improvement, or driven by a design incentive/market pressure, and where there was a reasonable expectation of success. No teaching, suggestion, or motivation ("TSM") is required. Several of the references here are themselves Kodak patents (US4827347, US5408287, US5689742), which matters because they establish that the same art unit/company was working the same design space.
Level of ordinary skill (POSITA). In 1997: a person with a BS in electrical/computer engineering (or photographic engineering) plus ~2–4 years designing microcontroller-based camera electronics and LCD control panels, familiar with (i) film/digital camera shutter and exposure control, (ii) dot-matrix/segment LCD camera displays, and (iii) touch-sensitive input surfaces (resistive/capacitive overlays) and their coordinate-sensing output. The '908 patent's own "Definitions" section confirms this is the intended audience — it defines a touch-sensitive control at the level of "a control which can sense the touch of a user's finger," and cites a 1995 Electronic Design News survey of touch-screen technologies as well-known art.
1. Element-to-reference matrix
| Element (literal claim language) | Reference(s) from the page's Prior Art section | Verified? |
|---|---|---|
| Camera + shutter + processor | All camera refs (US4247188, US4529291, US5218399, etc.) |
Yes |
| Touch-sensitive surface on a camera, sensing finger position | US4827347 (touch overlay "of the common touch screen type which provides an XY coordinate signal corresponding to the position of the finger"); Coolpix 300 (NPL) | Yes |
| Two-stage shutter: touch/partial state → parameter calcs; second state → shutter | US4247188 (touch-responsive switch F energizes light-measuring/indicating/storage circuits on mere finger contact, before depression; switch S2 then fires the electromagnetic release) | Yes |
| Displayed camera-function icons on an LCD | US5541656 (camera LCD with selectable function icons + option icons, incl. an "exposure offset … option icons along a scale bar") | Yes |
| User-selectable position of the shutter control (right- vs. left-hand; physical preference) | US5408287 (Kodak: microcomputer + look-up table switches the shutter function between left and right buttons "selectively tailored for right-hand or left-hand use") | Yes |
| Camera dot-matrix display capable of arbitrary icon rendering (position/size flexibility) | US5218399 (Minolta: camera LCD with dot-matrix part for "subtle expression"; analog scale display of exposure parameters) | Yes |
| Camera display/indicator of bad exposure / prevention of unintentional exposure | US4247188 ("exposure information indicating circuit"; "obviates any unintentional photography"); US5541656 (disable a selectable function) | Yes |
| Electronic (low-force) shutter release to reduce force/vibration | US4199245 (spec: "electronic shutter release to reduce the force required") | Title-level only |
| Zoom / variable-focal-length control | US3599548, US4697898, US4529291 (subject matter inferred) |
Not verified |
| Annotation / frame handling | US5689742 |
Title-level only |
2. The three combination packages
Combination A — "Touch-screen camera with two-stage, low-vibration shutter"
US4827347 + Coolpix 300 + US4247188 (+ US4199245).
- Motivation 1 (problem in the field): Camera shake caused by "punching" a shutter button is a recognized problem; the '908 spec itself concedes that a low-force electronic shutter release was known (
US4199245) to reduce required force. Replacing a force-actuated button with a near-zero-force touch surface directly addresses a known deficiency. - Motivation 2 (same problem, same art):
US4247188already teaches the exact functional architecture sought — a finger-contact stage that computes/indicates picture-taking parameters before the shutter stage, so the photographer can abort. Combining that control law with a known camera touch screen is a predictable substitution of input transducer. - Motivation 3 (KSR "known technique"): Coordinate-sensing overlays were ubiquitous (
US4827347; the 1995 EDN survey cited in the spec). Wiring the overlay's XY output to the camera microcomputer that already drives the shutter (US4247188's circuit D;US5218399's main controller) is routine engineering. - Reasonable expectation of success: High — all components are off-the-shelf and the microcomputer is already in the loop.
Combination B — "User-reconfigurable touch-screen controls"
US5408287 + US4827347/Coolpix 300 + US5541656 + US5218399.
- Motivation:
US5408287expressly identifies the problem — a fixed right-side shutter button "can make operation … uncomfortable for a left-handed person" — and solves it by making the shutter control's position user-selectable via a look-up table. Moving that same reconfiguration idea onto a touch screen displaying function icons (US5541656; Coolpix 300) is the quintessential KSR "known technique applied to a known device ready for improvement." A dot-matrix camera display (US5218399) supplies the rendering capability to draw the icon at any position or size. - Motivation (design incentive): Fewer mechanical parts, more flexible UI — the '908 spec itself frames this as the desired outcome, which is usable as evidence of a recognized design incentive.
Combination C — "Touch-selectable multi-position zoom scale"
US5541656 (US 5,541,656, cl. 22-style "selectable option icons along a scale bar") + US5218399 (analog scale display) + Coolpix 300 touch screen.
- Motivation: Direct-value entry on an analog scale is a known, predictable alternative to repeated up/down actuation; combining a displayed scale with a coordinate-sensing overlay means the touched position is the selected value. Efficiency (fewer button presses) is a recognized design incentive.
3. Claim-by-claim assessment
| Claim | Best § 103 combination | Strength of rejection on this record | Reasoning |
|---|---|---|---|
| 1 (touch control w/ two spaced positions; slide → shutter) | A | Weak–moderate | Every element except the slide gesture is met by A. No cited reference discloses or suggests triggering the shutter by a sliding motion across a camera touch surface. Would require additional art (touch-pad drag/slide) or Official Notice that slide/drag on coordinate-sensing surfaces was well-known. This is the true point of novelty. |
| 2 (same, control is a touch screen) | A + US4827347/Coolpix 300 |
Weak–moderate | Same gap as claim 1; the touch-screen element is squarely met, but the slide limitation still is not taught. |
| 3 (shutter icon with first/second positions) | A + B | Moderate–strong | Icons-as-virtual-buttons is taught by US5541656; coordinate-sensing selection by US4827347/Coolpix 300. Putting the two-position shutter into an on-screen icon is a predictable UI implementation. |
| 4 (touch first position → processor computes picture-taking parameters from sensor) | A (US4247188) |
Strong | US4247188 is very close to an express read: finger contact alone starts the light-measuring, indicating, and storage circuits ("current feeding … by only a finger touching the release button, before the button is depressed"). Substituting the touch screen's coordinate output for the touching electrode is a predictable variation. |
| 5 (user indicator / disable shutter when parameter outside preselected value) | A (US4247188 indicating circuit + "obviates any unintentional photography") + US5541656 (disable a function) |
Strong | Both the "warn" and the "disable" branches are separately taught. |
| 6 (reset parameters if finger moves elsewhere) | A | Moderate | US4247188's memory switch S3 / circuit de-energization is the mechanical analogue; a "cancel if contact leaves the first zone" rule is ordinary microcontroller logic. |
| 7 (shutter icon at different user-selectable positions) | B (US5408287) |
Strong | US5408287's stated purpose (left/right-hand tailoring) is a direct motivation to make the shutter control's position selectable; doing so for an on-screen icon is a predictable application. |
| 8 (dedicated icon-positioning mode) | B | Moderate | Pure software mode; US5408287's selector-bar/look-up-table teaches the concept of a user-set position. KSR allows the mode to be an obvious implementation detail. |
| 9 (zoom icon with first, second, and intermediate positions; touch to select zoom) | C | Moderate | Scale-bar/analog-scale camera displays (US5218399, US5541656 option-icons-along-a-scale-bar) + coordinate overlay give the result predictably. No cited reference ties the scale to a zoom motor, so this needs the obviousness inference, not anticipation. |
| 10 (zoom rate ∝ slide rate) | C | Weak | No cited reference discloses rate-proportional response to a sliding motion — same "slide" gap as claims 1–2, plus a proportionality limitation. |
| 11 (camera control icon at different user-selectable positions or sizes) | B (US5408287 + US5541656 + US5218399) |
Moderate–strong | Position reconfigurability is well-motivated by US5408287; size reconfigurability is supported by the dot-matrix camera display of US5218399 (arbitrary rendering) and the "physical requirements" problem. The "sizes" prong is the weaker half — no cited reference expressly re-sizes a camera control icon, so it rests on KSR predictability. |
| 12 (positioning/sizing mode) | B | Moderate | Same as claim 8. |
| 13 (control = shutter, aperture, flash, film position, power, capture format, zoom) | B + US5541656 (flash/shutter-delay/exposure-offset icons) + US5408287 (fill-flash "mode means") |
Strong | Each enumerated control is conventional in cameras of the era; the claim adds no structural limitation. |
4. Secondary considerations / rebuttal
- No secondary-consideration evidence is in the record. The spec does not present unexpected results, long-felt need, failure of others, copying, or licensing evidence directed to the slide gesture. The asserted advantages (reduced shake, fewer parts, customization) are stated as expected consequences and are largely already achieved by
US4247188(shake/pre-exposure) andUS5408287(customization) — which cuts against nexus. - Strongest rebuttal available to the patentee would be: (1) the cited references all use discrete mechanical switches or tap-based selection, and none suggests continuous sliding as the shutter act; (2) the Coolpix 300 — the closest prior-art camera touch UI — had only a tap-to-shoot icon, which the applicant expressly distinguished as lacking two-position (pre-exposure) activation. That distinction is real and is why claims 1–2 are the least vulnerable.
5. Bottom line
- Most vulnerable: claims 4, 5, 7, 13 (and, downstream, 3, 11), which map closely onto
US4247188,US5408287, andUS5541656and rest only on predictable combination reasoning. - Least vulnerable on this record: claims 1, 2, 10 — each depends on the sliding input (claims 1–2) or slide-rate proportionality (claim 10), and none of the twelve cited references nor the Coolpix 300 NPL discloses a slide-actuated camera control. A § 103 rejection of these would require additional art (a touch-drag/slide reference) or a contested Official Notice.
- Overall: the claims read as partially obvious over the page's prior art, not wholly so. The likely reason the examiner allowed the case is that the cited art addressed discrete controls, while claims 1–2/10 capture a continuous slide input.
6. Verification flags (do not over-trust)
- Verified by fetch:
US4827347,US5408287,US5541656,US4247188,US5218399. URLs: https://patents.google.com/patent/US4827347 ; https://patents.google.com/patent/US5408287 ; https://patents.google.com/patent/US5541656 ; https://patents.google.com/patent/US4247188 ; https://patents.google.com/patent/US5218399 ; page text: https://patents.google.com/patent/US5923908/en - Not verified — inferred from title/subject matter only:
US3599548(Agfa "Release means for photographic apparatus"),US4199245,US4206990,US4529291,US4697898,US5461453,US5689742. In particular I could not confirm whetherUS3599548discloses a sliding release mechanism — if it does, it would materially strengthen the attack on claims 1–2 and should be run down before relying on my "least vulnerable" conclusion. - Coolpix 300 (NPL): I could not fetch the cited pages/photograph; its features here are taken from the '908 spec's own description plus the citation. Treat the "tap-only, no two-position touch shutter" characterization as the applicant's representation.
- Consistent with the earlier sections: no court has adjudicated validity (Xerox DJ voluntarily dismissed; GoPro case terminated) and no IPR on '908 was located — so there is no estoppel or PTAB claim-construction to build on.
- This is a technical obviousness assessment, not a legal opinion or validity conclusion.
Generated 9/29/2026, 2:42:27 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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