Federal Circuit reiterates holding regarding errors in prior art referencesAugust 11, 2022

On July 11, 2022, in LG Electronics Inc. v. ImmerVision, Inc., the Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the United States Patent Trial and Appeal Board’s (“PTAB”) final written decisions in two inter partes reviews (“IPR”) wherein it was held that LG Electronics Inc. (“LG”) failed to show that the challenged claims of U.S. Patent No. 6,844,990 (“the ‘990 patent”) were unpatentable. The Federal Circuit noted that substantial evidence existed supporting the fact that the relevant prior art disclosure relied on by LG in petitioning for IPR contained an error “that would have been disregarded or corrected by a person of ordinary skill in the art”.

The ’990 patent is directed to “capturing and displaying digital panoramic images”. Resolution of panoramic images can become distorted when such images are manipulated such as by enlarging or other means. The ‘990 patent claims to “improve the resolution of particular sectors of a digital panoramic image ‘without the need to increase the number of pixels per unit of area of an image sensor or to provide an overlooking optical enlargement system’”.

LG filed two petitions for IPR, wherein each petition challenged a claim of the ‘990 patent, arguing that both claims were unpatentable due to them being obvious in light of the prior art. LG relied on a single prior art reference for teaching the relevant limitation of the challenged patents, this reference being U.S. Patent No. 5,861,999 (“the Prior Art Reference”), which claims priority to a Japanese Patent Application No. 09-201903 (“the Japanese Priority Application”). In its challenge, LG relied exclusively on an expert declaration based on the Prior Art Reference indicating that one embodiment of the Prior Art Reference taught the claimed invention of the ‘990 patent, rendering it obvious. The PTAB instituted both IPRs, and the parties engaged in expert discovery. ImmerVision, Inc. (“ImmerVision”) introduced its own expert whose job it was, at least in part, to verify the underlying work comprising LG’s expert’s declaration. During this verification process, ImmerVision’s expert discovered that the Prior Art Reference contained a transcription, or a copy-and-paste, error such that certain values in a table differed from the Japanese Priority Application. In the final written decisions for both of the IPRs, the PTAB found the difference between the Prior Art Reference and the Japanese Priority Application to be “‘an obvious error’ that a person of ordinary skill in the art would have recognized and corrected”. Additionally, the PTAB concluded that because the correct values found in the Japanese Priority Application did not “satisfy the language of the challenged claims, LG had not met its burden to prove the challenged claims unpatentable as obvious.” LG appealed to the Federal Circuit.

In its opinion, the Federal Circuit noted that it is undisputed that the relevant portion of the Prior Art Reference is erroneous. The Federal Circuit further noted that it is also undisputed that the correct values from the Japanese Priority Application do not satisfy the limitations of the challenged claims. Therefore, the Federal Circuit noted, “the primary question before us is whether substantial evidence supports the [PTAB]’s fact finding that the error would have been apparent to a person of ordinary skill in the art such that the person would have disregarded the disclosure or corrected the error”. The Federal Circuit identified the precedential standard which holds “where a prior art reference includes an obvious error of a typographical or similar nature that would be apparent to one of ordinary skill in the art who would mentally disregard the errant information as a misprint or mentally substitute it for the correct information, the errant information cannot be said to disclose subject matter”. The opinion went on to conclude, based on technical, case-specific reasoning, that the PTAB’s finding is supported by substantial evidence, wherein the PTAB’s finding was that the relevant portion of the Prior Art Reference was an obvious error of a typographical or similar nature such that it would have been apparent to a skilled artisan.

LG made two arguments to support its challenge of which the Federal Circuit specifically addressed in its opinion. The first of these arguments is that the relevant standard based on case law involves a temporal urgency element applied to the discovery of an error when considering whether said error is obvious to a skilled artisan. LG argued that the fact that the error was not identified until after a “convoluted process” that took “ten to twelve hours” was conducted by ImmerVision’s expert weighed against the obviousness of the error. LG additionally noted that the Prior Art Reference existed in the public domain uncorrected for over 20 years. The Federal Circuit cited that the relevant case law “does not impose a temporal requirement”. The Federal Circuit acknowledged that the amount of time it takes to discover an error may be relevant to whether an error is apparent, but that the timing of the discovery of an error is just one factor involved in determining whether the error is obvious. Second, LG argued that the relevant case law holds that these types of errors, which cannot be relied on as disclosing subject matter, only apply when the error is a typographical error, such as a spelling error. The Federal Circuit noted that the error in the relevant portion of the Prior Art Reference, namely incorrect values in a table, was simply a transcription/copy-and-paste error which is not distinct from typographical errors of the relevant case law.

Judge Newman dissented-in-part from the majority’s decision. While Judge Newman agreed with the standard used by the majority to determine if an error would be obvious to a person of ordinary skill in the art, the judge disagreed with the majority’s application of that standard. Judge Newman disagreed with the majority’s opinion that the error of the Prior Art Reference is a typographical or similar error. The judge’s dissent cited the fact that the error was not discovered until an “expert witness conducted a dozen hours of experimentation and calculation” and compared the Prior Art Reference with the Japanese Priority Application. Additionally, Judge Newman pointed to the fact that the error was not noticed by any of the patent attorneys or the patent examiner during prosecution of the ‘990 patent. Further, a Certificate of Correction was issued to fix typographical errors in the ‘990 patent, but the relevant error was not fixed via Certificate of Correction. The dissent additionally laid out in detail the process that ImmerVision’s expert witness underwent in order to discover the error, and, due to the process, argued that the error was not typographical or similar in nature. Judge Newman also made several points distinguishing the instant case from the relevant case law in which an error was held to be an obvious error typographical in nature.

Regardless of Judge Newman’s dissent, the instant case reiterates the Federal Circuit’s holding that where a Prior Art Reference includes an obvious error of a typographical or similar nature that would be apparent to one of ordinary skill in the art who would mentally disregard the errant information as a misprint or mentally substitute it for the correct information, the errant information cannot be said to disclose subject matter. However, based on the dissent, determining whether an error in a prior art reference is an obvious error of a typographical or similar nature can be a tricky matter.

Joseph M. Hallman is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Joseph directly via email at joseph.hallman@ipmvs.com