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In this week’s Case of the Week, the Federal Circuit considered how to treat a prior art reference in which the alleged teaching of a claim element would be understood by a skilled artisan not to be an actual teaching, but rather an error of a typographical or similar nature.  The Court affirmed a pair of inter partes review decisions finding that the challenged claims were not shown to be unpatentable as obvious, because the alleged prior art teaching on which petitioner/appellant LG Electronics relied was shown by substantial evidence to be a copy-and-paste error that a person of ordinary skill in the art would have disregarded or corrected.

The claims at issue concerned methods of capturing digital panoramic images that purported to improve resolution of particular sectors of the image, and included limitations requiring an objective lens with a particular non-linear image point distribution.  In arguing that the claims were obvious, LG relied on a United States patent (Tada) directed to wide-angle lens systems using aspherical lenses.  Tada described four embodiments of its system using lenses of different thicknesses, shapes, and separation distances, with those parameters or “prescriptions” set forth in various tables.  While Tada did not discuss the image point distribution functions of these lenses, LG’s expert, Dr. Chipman, used the prescription in Table 5 of Tada, corresponding to its third disclosed embodiment, to reconstruct a model of that embodiment and opine that it had the non-linear image point distribution characteristics recited in the challenged claims.

Yet patent owner Immervision’s expert, Mr. Aikens, found that something was off about Dr. Chipman’s calculations.  The physical surface of the model from Table 5 did not match the lens shown in the corresponding figure in Tada, nor did it match other information in Tada purporting to describe the third embodiment, and Mr. Aikens opined that it otherwise would produce an image suffering from the same types of distortions that Tada had tried to correct.  After additional analysis, Mr. Aikens noticed that a set of “aspheric coefficient” values set forth in Table 5 were the same as those set forth in Table 3 corresponding to a different embodiment, which he opined was highly unusual.  Finally, comparing Tada to its underlying Japanese priority application, it was found that while other data and other tables had been carried over, the aspheric coefficient values in Table 5 were different between Tada and the Japanese application.

Ultimately, it was undisputed that the aspheric coefficients in Tada Table 5 were incorrect and had been inadvertently copied and pasted from the values in Table 3.  On appeal, the question was whether the resulting lens as modeled by Dr. Chipman was nonetheless available as prior art.

In resolving this question, the Federal Circuit relied on its predecessor court’s decision in In re Yale, 434 F.2d 666 (C.C.P.A. 1970), which “held 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.”  The Court reaffirmed this as a correct statement of the law and relying on the inconsistencies between Tada and the Japanese application, as well as internal inconsistencies in Tada as identified by Mr. Aikens, found that the copy-paste error here was such an error.  The Court rejected LG’s argument that the error must be so “obvious” that a skilled artisan must “immediately disregard or correct” it, finding that the length of time or particular manner in which an error is corrected may be a factor used in determining whether the error was apparent, but did not otherwise diminish the fact that there was an obvious error given the totality of the circumstances.  It also found that there was no meaningful difference between the obvious “typographical” error at issue in Yale and the copy-paste error in Tada.

Because the Board’s conclusion that a skilled artisan would have disregarded or corrected the error—and its subsequent finding that the claims were not shown to be obvious—were supported by substantial evidence, the Federal Circuit affirmed.  Judge Newman dissented in part, agreeing that the Court had applied the correct standard but arguing that the complex analysis and resort to extrinsic information required for Mr. Aikens to discover the error, as well as the fact that Tada had stood uncorrected in the public record for 20 years prior to the IPRs, counseled against finding it was an “obvious” error of a “typographical or similar” nature.

The opinion can be found here.

By Jason A. Wrubleski

ALSO THIS WEEK

Koninklijke Philips v. Thales USA, Inc., Appeal No. 2021-2106 (Fed. Cir. 2022)

In this case, the Federal Circuit affirmed the district court’s denial of a preliminary injunction sought by appellant Thales to prevent appellee Philips from pursuing an International Trade Commission (ITC) action seeking an exclusion order.  Thales had sought the injunction with a breach of contract counterclaim after the parties failed to negotiate a license to Philips’ standard essential patents.  The Court found that Thales failed to meet its burden of establishing a likelihood of irreparable harm.  In reaching this conclusion, the Court explained that “Thales did not present any evidence that it lost customers, had customers delay purchases, or struggled to acquire new business because of the ongoing ITC proceedings.”  Rather, Thales relied on arguments of a potential loss of business, citing only evidence of a few customers who “voice[d] concerns.”  The Court explained that such “speculative harm does not justify the rare and extraordinary relief of a preliminary injunction.”  Thus, the Court affirmed, finding that the district court did not abuse its discretion in denying Thales’ motion for a preliminary injunction.

The opinion can be found here.

By Annie White

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This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.