O prior art, prior art, why art despite prior art?

by Dennis Crouch

In a new opinion, the court asked and answered an interesting question: What if most current prior art was created accidentally due to a typographical error? in LG Electronics, Inc. v. ImmerVision, Inc., — F.4th — (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. Key to the analysis was the finding that the error would have been obvious to someone skilled in the art. look In re 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 lens that captures and then digitally maps onto a linear pixel grid. The claims claim that the lens compresses the image at its center and edges and expands the areas in between. You can compare the results of the linear lens prior art (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 generally produce a lower image quality. The approach here improves the quality of these 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 would work as well. One example could be a 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 instituted the IPR here, but ultimately concluded that LG had failed to show that the claims should be dismissed. On appeal, the Federal Circuit affirmed. Justice Stoll composed the majority opinion, in which Justice Cunningham joined. Judge Newman wrote in partial dissent – arguing that the prior art error was not sufficiently obvious error.

Typographical error in prior art: The key prior art (Tada) includes one table of aspheric data that appears to indicate a non-linear lens similar to that of ImmerVision. The problem – these figures do not match other performance descriptions in the Tada specification, and there is no discussion in Tada of the presence of such a non-linear lens. Tada is a US patent, and the crucial point for the court was that the original Japanese priority document included different numbers that actually matched the other parts of the specification. Finally, LG does not dispute that “the aspherical coefficients in Tada’s Table 5 are wrong.”

Of course, patent attorneys don’t usually get a balcony scene that asks: O prior art, prior art, why art despite prior art? Rather, we accept the printed publication as it stands and compare the published words and figures with the patent document. But for clarity, we ask an additional WWPD question: What would POSITA do? And here we have some precedent with the court declaring that a person skilled in the art (POSITA) will overlook an obvious typographical error in the prior art and instead correct the typographical error before attempting to change the reference. In re Yale434 F.2d 666 (CCPA 1970).

in Yale, a patentee sought protection for a specific compound of the inhalation anesthetic – 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. However, the compound was not actually known at the time, and it was clear from the context that the author of this prior art publication was referring to CF3CHClBr, which was actually well known at the time. In correspondence, the author of the prior art admitted that this was “of course a mistake”. However, the PTO rejected the claims as obvious because the compound was actually disclosed in the prior art. On appeal, the CCPA reversed—holding that such a POSITA would “mentally overlook” such an “obvious error” in the prior art.

Surely he would not have been misled by the typo into using 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 gone so far in his thought process as to determine if he knew how to make CF(3) CF(2) CHClBr, as it would have long since been dismissed by him as an obvious typo.

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 CCPA holdings as binding precedent. South Corp. against the United States690 F.2d 1368 (Fed. Cir. 1982):

In LG, the Board concluded that Tada’s error was plain error consistent with the opinion Yale. On appeal, the Federal Circuit affirmed that there was substantial evidence to support the Board’s findings.

This is where Justice Newman’s dissent intervenes. She notes that the error was not discovered “until an expert witness conducted a dozen hours of experiments and calculations.” In addition, Tada’s owners filed a certificate of correction to correct certain aspects of the patent, but did not correct the table. Judge Newman also noted that the only way for an expert to firmly conclude that the error existed was by translating the Japanese priority document – something that optical experts are unlikely to do.

I agree with the majority of the panel that Yale establishes the proper standard for determining whether an error would be obvious to a person of ordinary skill in the art. However, I disagree with the majority’s application of that standard to the facts here. A “manifest error” must be obvious at first glance and should not require the conduct of experiments or the search for possibly conflicting information to determine whether an error exists. When the reference contains erroneous teaching, its prior art value must be determined.

The error in Tada’s reference is clearly not a “typographical or similar error” because the error is not facially obvious and the correct information is not obvious. It should not be necessary to look to a foreign document in a foreign language to determine whether there is an inconsistency in a United States patent. The basis of the “typographical or similar” standard is that an error is easily recognizable as an error. I am concerned that we are troubling long-standing law, and so I respectfully dissent in part.

Slip On. (Newman, J. dissenting). The majority ignored Judge Newman’s arguments: “The difference between a typographical error at Yale and a copy-and-paste error here is a difference without a difference.” ID. (majority of the majority).

LG asked the court to change its standard to disregard only typographical errors that are “immediately” obvious. The court rejected this time urgency because it was not required by Yale.

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