O Prior Art, Prior Art, Why Art Though Prior Art?

by Dennis Crouch

In a new opinion, the court asked and answered an interesting question: What if most of the prior art was created accidentally because of a typographical error? IN LG Electronics, Inc. c. ImmerVision, Inc., – P.4 – (Fed. Cir. 2022), the Court sided with the patentee holding that a person skilled in the art would have “overlooked or corrected” the mistake rather than relying on the mistake as the basis of an inventive step. A key to the analysis was a finding that the error would have been apparent to one of skill in the art. Look In cloud Yale434 F.2d 666 (CCPA 1970).

ImmerVision’s patent claims an improved method for panoramic imaging. The basic idea is to use a non-linear objective lens that is captured and then digitally mapped to a linear grid of pixels. The claims require the lens to compress the image at its center and edges and expand the intermediate areas. You can compare the results of the prior art linear objective lens (Fig. 4A) with those of the proposed panoramic lens (Fig. 7A).

Due to the curvature of the lens, the center and edges of a super wide angle lens usually produce lower image quality. The approach here improves the quality of those areas, but at the same time creates strange distortions in the image that must then be corrected using digital image processing. There are other solutions that will work as well. An example would be the higher sensor density in these particular areas.

Many smartphones now have multiple lenses, including panoramic lenses. ImmerVision sued LG (and others) for patent infringement, and LG responded with two IPR petitions. The PTAB decided the IPR here, but ultimately concluded that LG had failed to prove that the claims should be dismissed. On appeal, the Federal Circuit affirmed. Judge Stoll wrote the majority opinion, in which Judge Cunningham joined. Judge Newman wrote in partial dissent—arguing that the error in the prior art was not sufficiently obvious.

Typo in Prior Art: Prior art (Tada) included an aspheric datasheet that appeared to show a non-linear lens similar to that of ImmerVision. The problem – these figures do not match the other embodiment descriptions in the Tada specification and there is no discussion in Tada of having such a non-linear lens. Tada is a US patent, and the key thing for the court was that the original Japanese priority document included different numbers that actually matched other parts of the specification. Finally, LG did not dispute that “the aspheric coefficients in Tada’s Table 5 were wrong.”

Of course patent attorneys don’t usually get a balcony scene asking: O Prior Art, Prior Art, why art though Prior Art? Rather, we take the printed publication as is and compare the published words and figures with the patent document. But for clarity we ask WWPD an additional question: What would the POST OFFICE do? And here, we have a precedent with the court holding that a person skilled in the art (POSITA) would disregard an obvious typo in the prior art and instead correct the typo before attempting to modify the reference. In cloud Yale434 F.2d 666 (CCPA 1970).

IN Yale, a patentee was seeking protection for a specific inhalation anesthetic compound – CF3CF2CHClBr. The USPTO rejected Yale’s claims as obvious based on a prior art publication that listed the same compound (CF3CF2CHClBr) as a known important analgesic compound. At the time though the compound was not actually known and it was clear from the context that the author of that prior art publication meant CF3CHClBr, which was actually known at the time. In correspondence, the author of the prior art admitted that it was “of course, a mistake”. Still, the PTO rejected the claims as obvious since the composition was actually disclosed in the prior art. On appeal, the CCPA reversed—holding that such a POST would “mentally disregard” such an “obvious error” in the prior art.

Of course, he would not be led by the typographical error to use the wrong compound as an anesthetic, even if as a chemist of ordinary skill in the art he knew how to prepare the compound. He simply wouldn’t have gotten far enough in his thought process to determine if he knew how to make CF(3) CF(2) CHClBr, as it would have long since been discarded by him as an obvious typographical error.

Yale. One aside about Yale. Yale was decided by the Federal Circuit’s predecessor court, the Court of Customs and Patent Appeals (CCPA), and remains good law and binding precedent for the Federal Circuit. In its first decision in 1982, the Federal Circuit adopted all prior holdings of the CCPA as binding precedent. South Corp. against the USA690 F.2d 1368 (Fed. Cir. 1982):

In LG, the Board concluded that the Tada error was plain error consistent with the holding of Yale. On appeal, the Federal Circuit affirmed—holding that substantial evidence supported the Board’s findings.

This is where Justice Newman’s dissent comes into play. She notes that the error was not discovered “until an expert witness performed a dozen hours of experimentation and calculation.” Further, Tada’s owners had filed a rectification certificate to correct certain aspects of the patent – but did not correct the table. Judge Newman also notes that the only way the expert witness could have concluded that the error existed was by translating the Japanese priority document – ​​something that even optical experts are unlikely to do.

I agree with the majority of the panel that Yale sets the appropriate standard for determining whether an error would be apparent to a person of ordinary skill in the art. However, I disagree with the majority’s application of that standard to the facts here. An “obvious error” must be apparent on its face and should not require the performance of experiments or the search for possibly conflicting information to determine whether the error exists. When a reference contains erroneous teaching, its value as prior art must be determined.

The error in the Tada reference is not clearly a “typographic or similar error” because the error is not apparent on its face and the correct information is not readily apparent. It should not be necessary to look to a foreign document in a foreign language to determine whether there is a discrepancy in a United States patent. The basis of the “typographical or similar” standard is that the mistake is easily recognized as a mistake. I am concerned that ours is troubling longstanding law and therefore I respectfully dissent in part.

Slip On. (Newman, J. dissenting). The majority disregarded Judge Newman’s arguments: “The distinction between the typographical error in Yale and the copy-and-paste error here is an indistinguishable one.” Id. (majority opinion).

LG had asked the court to change its standard — just to disregard typographical errors that are “immediately” obvious. The court dismissed this temporary emergency as it is not required by Yale.

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