In LG Electronics Inc. v. Immervision, Inc.,1 the Federal Circuit held that an obvious error in a prior art reference was not considered a teaching. The court explained that a person of ordinary skill in the art (POSITA) would have disregarded or corrected the apparent typographical or similar error in the prior art reference. The remainder of the prior art reference would continue to be considered a potentially relevant prior art disclosure. Judge Newman dissented, arguing the error was not discovered until an expert spent a dozen hours of experimentation and calculation, and therefore, the error was not apparent.
The Federal Circuit framed the question on appeal as follows:
This appeal requires us to consider 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 to be an obvious error of a typographical or similar nature.2
U.S. Patent No. 6,844,990 described capturing and presenting digital panoramic images using superwide-angle lenses with linear image point distribution functionality. This linearity constrained image quality to the image sensor resolution used when capturing the original image. The ’990 patent claimed to enhance the resolution of specific areas of a digital panoramic image without requiring more pixels per unit of area of the image sensor.
The ’990 patent disclosed taking a digital panoramic image via an objective lens with a nonlinear image point distribution function that expanded specific areas of the image and reduced other areas. The nonlinearity of the image could be adjusted to create the final panoramic image. The claims recited that the lens “compresses the center of the image and the edges of the image and expands an intermediate zone of the image located between the center and the edges of the image.”3 Dependent claim 5, which depended from cancelled claim 1, stated the following:
1. (Cancelled) A method for capturing a digital panoramic image, by projecting a panorama onto an image sensor by means of a panoramic objective lens, the panoramic objective lens having an image point distribution function that is not linear relative to the field angle of object points of the panorama, the distribution function having a maximum divergence of at least ±10% compared to a linear distribution function, such that the panoramic image obtained has at least one substantially expanded zone and at least one substantially compressed zone.
5. The method according to claim 1, wherein the objective lens compresses the center of the image and the edges of the image and expands an intermediate zone of the image located between the center and the edges of the image.4
LG filed two petitions for inter partes review, each contesting a dependent claim of the ’990 patent. LG based the invalidity ground on U.S. Patent No. 5,861,999 (Tada), directed to a “Super Wide Angle Lens System Using an Aspherical Lens.”5 Tada disclosed four embodiments. Embodiment 3 was the relevant embodiment, shown in Figure 11 and depicted by a set of optical parameters in Table 5. Tada claimed priority to Japanese Patent Application No. 09-201903, published as JP H10-115778 (Japanese Priority Application).
Tada did not specifically describe the image point distribution function of the ’990 patent. LG relied on its expert Dr. Russell Chipman’s declaration that Tada’s third embodiment included a distribution function producing “a compressed center and edges of the image and an expanded intermediate zone of the image between the center and the edges of the image” as recited in challenged claims 5 and 21.6
Dr. Chipman’s declaration provided the only calculations and plots to demonstrate that Tada’s third embodiment satisfied the compression and expansion zone claim feature.
The Board instituted inter partes review. Immervision relied on its expert Mr. Aikens’ declaration in the patent owner response to contend that Tada’s Table 5 had a clear error and could not be used in an obviousness ground of invalidity. Specifically, Mr. Aikens observed that the aspheric coefficients from Table 3, which corresponded to Tada’s Embodiment 2, were the same as in Table 5, which corresponded to Embodiment 3.
It was clear to Mr. Aikens that there was a transcription, or copy-and-paste, mistake in Tada because Tada’s Table 5, which was supposed to correspond to Embodiment 3, was indistinguishable from Table 3, which corresponded to Embodiment 2.
The Board held that the description of aspheric coefficients in Table 5 of Tada was an obvious error that a POSITA would have understood and remedied. Accordingly, the Board determined that LG did not prove the claims would have been obvious.
LG appealed, and the Federal Circuit affirmed. The court observed that it was “undisputed that the aspheric coefficients in Tada’s Table 5 were erroneous.”7 The court explained:
the primary question before us is whether substantial evidence supports the Board’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.8
The court observed the discrepancy between the Tada’s figures. The court summarized the overall standard for evaluating an obvious error in a prior art reference as follows:
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 remainder of the reference would remain pertinent prior art disclosure.9
The Board determined that the aspheric coefficients in Tada’s Table 5 would have been considered an obvious typographical-like error that would have been clearly evident to one of ordinary skill, and the Federal Circuit agreed. According to the court:
The Board correctly identified several aspects of the disclosure in Table 5 that would alert the ordinarily skilled artisan that the disclosure was an obvious error of a typographical or similar nature. . . . [T]he Board found that the discrepancy between the coefficients in Tada’s Table 5 and the Japanese Priority Application’s Table 5 was “grounded [in] a transcription error in the values for A4, A6, and A8 in Tada’s Table 5, namely, inadvertent duplication of the values for the aspherical data in Table 3.” . . . The Board explained that the “correspondence of the Tables 1, 3, 7, and 9 between the [Japanese Priority Application] and Tada itself is apparent, even prior to translation, as is the inconsistency as to the aspherical data for Table 5.”10
The court also noted that the Board determined that it was uncommon for Tables 3 and 5 to use the same aspheric coefficients.11 Accordingly, the court held the following:
Considering all the evidence before it, the Board reasonably found that Tada’s Table 5 includes an obvious error of a typographical or similar nature that would have been apparent to one of ordinary skill in the art, who would have substituted it with the correct information and, thus, that Table 5 cannot be said to disclose a lens that compresses the center of the image and the edges of the image and expands an intermediate zone of the image located between the center and the edges of the image.12
LG, however, asserted that the standard to determine whether an error is obvious requires one of ordinary skill in the art to immediately appreciate the error. The court disagreed and explained that there is no time-based requirement:
Here, the Board considered the totality of circumstances and found that Tada’s disclosure of aspheric coefficients in Table 5 is an obvious error of a typographical or similar nature, notwithstanding the amount of time that preceded detection of the obvious error.13
LG also argued that the apparent error should be limited to when it was merely a typographical error. The court disagreed because the error was akin to a typographical error. The court reasoned the Board determined the error in Tada’s Table 5 was “a transcription error ... namely, inadvertent duplication of the values for the aspherical data in Table 3.”14
Therefore, the court held substantial evidence backed the Board’s holding that prior art disclosure critical to both of LG’s petitions for inter partes review was an apparent error that would have been disregarded or corrected by one of ordinary skill in the art.15 Accordingly, the court affirmed the Board’s final written decisions.
Judge Newman dissented, arguing that the error in the Tada prior art reference was not a typographical error or similar type of mistake because the correct information was not readily evident. Judge Newman noted, “It should not be necessary to search for a foreign document in a foreign language to determine whether there is an inconsistency in a United States patent.”16
Lessons and Advice:
In LG Electronics, Inc. v. Immervision, Inc., the Federal Circuit agreed with the patent owner, holding that a POSITA would have disregarded or corrected the error instead of using the prior art disclosure with the error as the invalidity basis. A crucial basis of the holding was that the error would have been apparent to one of ordinary skill in the art. The error in the prior art reference was considered apparent even though Immervision’s expert discovered it in an older patent, where it had not been previously discovered. Thus, there is no requirement for the error—in this case, a transcription error—to be immediately clear to one of ordinary skill. That is, this case shows that as long as the error itself is identifiable, there is no requirement that the error be uncovered within a certain period. However, the difficulty in discovering the error will have some bearing on whether the error was readily apparent to one of ordinary skill.
Thus, this decision demonstrates that when submitting applications, patent owners should be careful to ensure that the technical disclosure contains all the details to satisfy the enablement and written description requirements. In addition, litigators and those attempting to invalidate a patent should not disregard prior art where an error in the prior art disclosure might make a difference between valid and invalid. In the end, the determination of whether the error was apparent and therefore correctable will be based on evidence showing what one of ordinary skill would have understood. Thus, patent applicants/litigants will need to provide thoughtful evidence and testimony to support their position, either before the Patent Office in a contested proceeding or before a federal court in a civil litigation.
Irah Donner is a partner in Manatt’s Intellectual Property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 LG Elecs. Inc. v. Immervision, Inc., 39 F.4th 1364, 2022 USPQ2d 630, 2022 WL 2659335 (Fed. Cir. 2022).
2 Id., 39 F.4th 1365.
3 U.S. Patent No. 6,844,990 col. 19 ll. 48–51.
4 Id., '990 patent col. 19 ll. 26–51 (claim 5) (emphasis added).
5 U.S. Patent No. 5,861,999.
6 LG Elecs. Inc. v. Immervision, Inc., 39 F.4th 1364, 1367, 2022 USPQ2d 630, 2022 WL 2659335 (Fed. Cir. 2022).
7 Id., 39 F.4th at 1371.
8 Id., 39 F.4th at 1371.
9 Id., 39 F.4th at 1372 (citations omitted) (citing In re Yale, 434 F.2d 666, 669, 58 C.C.P.A. 764, 768, 168 USPQ 46, 48 (C.C.P.A. 1970); and Deckers Corp. v. United States, 752 F.3d 949, 955–56 (Fed. Cir. 2014) (discussing stare decisis)).
10 Id., 39 F.4th at 1372–73 (citations omitted).
11 Id., 39 F.4th at 1373.
12 Id., 39 F.4th at 1373.
13 Id., 39 F.4th at 1374.
14 Id., 39 F.4th at 1375 (quoting Final Written Decision, 2021 WL 1904645, at *9).
15 Id., 39 F.4th at 1365.
16 Id., 39 F.4th at 1377 (Newman, J. dissenting).