LG filed two Inter Partes Reviews (IPRs) against U.S. Patent No. 6,844,990, challenging claims 5 and 21, respectively.  Both Patent Trial and Appeal Board (PTAB) panels sided with Immervision, finding that a critical section of the prior art used in LG's obviousness contentions contained an error that "would have been disregarded or corrected by a person of ordinary skill in the art."

The invention is described by the Court as follows:

The '990 patent relates to capturing and displaying digital panoramic images.  Panoramic (e.g., super-wide angle) objective lenses typically have linear image point distribution functions.  This means there is a linear relationship between the distance of an image point from the image's center and the corresponding relative angle of the object point to the image's center.  While this linearity allows digital panoramic images to be easily rotated, shifted, and enlarged or shrunk, it also limits image quality to the resolution of the image sensor used when taking the initial image.

* * *

The '990 patent purports to improve the resolution of particular sectors of a digital panoramic image [by] capturing an initial digital panoramic image using an objective lens having a non-linear image point distribution function that expands certain zones of the image and compresses other zones of the image.

Along these lines, representative claim 5 recites:

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.

LG's arguments that claims 5 and 21 are obvious relied on disclosure from U.S. Patent No. 5,861,999 ("Tada"), which described four embodiments "relating to the aspheric characteristics of various lens elements."  Embodiment 3 of Tada described a set of optical parameters in Table 5.

LG contended that Embodiment 3 disclosed the features of claim 5.  As noted by the Court, "Tada, however, does not explicitly discuss the image point distribution functions of its lenses" and "[i]nstead LG relied on its expert Dr. Russell Chipman's declaration for the proposition that Tada's third embodiment has a distribution function" as claimed.  Indeed, Dr. Chipman used Table 5 of Tada to model the lens of Embodiment 3 and calculated that this embodiment produces the compression and expansion of claim 5.  On this basis, the PTAB instituted both IPRs.

Immervision hired its own expert, Mr. David Aikens, who independently modeled the lens of Embodiment 3 using the parameters from Table 5.  Mr. Aikens, however, found that the lens did not match the corresponding example in one of Tada's figures.  After some investigation, Mr. Aikens concluded that the lens would provide an image that was "distorted with precisely the kind of uncorrected field curvature that Tada was explicitly trying to prevent."  Thus, Mr. Aiken's wrote that "a person of ordinary skill in the art would be convinced that there was an error in the model and that the error was significant."

Looking into the matter further, Mr. Aikens found that "the aspheric coefficients from Table 3, which corresponds to Tada's Embodiment 2, were exactly the same as in Table 5, which corresponds to Embodiment 3.  Further, Tada claimed priority to a Japanese patent application.  Mr. Aikens also reviewed this application and found that the parameters in its version of Table 5 were different from those of the '999 patent.  Using the different parameters from the Japanese application, Mr. Aikens confirmed that they produced a lens surface that perfectly matched the other disclosure in Tada.  In other words, Table 5 of Tada, which was relied on by LG, was the product of a copy and paste error and thus contained incorrect values.

In both IPRs, the PTAB concluded that the "disclosure of aspheric coefficients in Table 5 of Tada is an obvious error that a person of ordinary skill in the art would have recognized and corrected."  Thus, the PTAB ruled that LG had failed to prove claims 5 and 21 obvious.  LG appealed.

Judge Stoll, writing in majority for herself and Judge Cunningham, rapidly determined that "[i]t is undisputed that the aspheric coefficients in Tada's Table 5 were erroneous" and that "there is no dispute that if a lens were constructed using the (correct) aspherical data from Tada's Japanese priority application, the lens would not satisfy the compression and expansion zone limitation of claims 5 and 21."  The question to the Court, then, was "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."

In making this determination, the majority relied on In re Yale, a Court of Customs and Patent Appeals case from 1970.  Therein, a similar fact pattern was present -- a claim was rejected over a reference that erroneously disclosed a chemical compound that was not discovered until several years after the reference was published.  Notably, the reference's description of this compound was inconsistent, and later an author of the reference admitted that disclosure of the compound was erroneous.

The holding from Yale, and described by the majority, was:

[W]here 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.  This standard for reviewing errors in disclosures has been undisturbed for half a century and we are bound to apply it.

Applying this law to the facts of this case, the majority found that "[t]he 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."  The first of these aspects was that Table 5 in the Japanese priority application had different parameters than the equivalent Table 5 in Tada.  Second, Tada's Table 5 was inconsistent with other disclosure in Tada.  Third, the fact that the parameters from Tables 3 and 5 were identical "is incongruous with the differences in the values of other data for the lens systems."

LG made two arguments against the PTAB's conclusion.  The first was that "Mr. Aikens' convoluted process that took ten to twelve hours to complete clearly weighed against the obviousness of the error."  The majority disagreed, noting that Yale does not impose a temporal requirement regarding how long it would take one to determine that a reference contains an error.  The second was that Yale should be limited to just typographical errors.  Again, the majority disagreed, finding that the distinction between the typographical error of Yale and the copy-and-paste error of Tada was not significant enough to overrule the PTAB.

Thus, the majority affirmed the PTAB's final written decisions that LG had not established the obviousness of claims 5 and 21.

Judge Newman wrote in dissent.  The crux of her disagreement with the majority was that the error in Tada was not found "until an expert witness conducted a dozen hours of experimentation and calculation."  Thus, she did not believe that the error to be merely typographical.

Judge Newman observed that the error in Table 5 was not noticed by prosecuting patent attorneys, the patent examiner, or in a certificate of correction that was obtained to address other errors in Tada.  The error was also not noticed by two PTAB panels that instituted the IPRs.[1]  Judge Newman also noted that Mr. Aikens only noticed the error after creating a model for the lens and hours of subsequent investigation.  In Judge Newman's view, this distinguished the situation surrounding Tada from that of Yale, mainly because "Yale did not require calculations or experimentation" and "the correct information is not readily evident."[2]

Thus, Judge Newman would reduce the scope of Yale to typographical errors that are readily recognized as such by a quick review of the prior art reference.

[1] In modest disagreement with Judge Newman, once an error like this is in a patent application, it would be unlikely to be noticed during prosecution and subsequent proceedings that are largely focused on the language of the claims.  In contrast, the hypothetical person of ordinary skill in the art is presumed to review the patent in its totality.

[2] Judge Newman admitted that by looking to the Japanese priority application, one could readily identify the error.  She wrote that "[i]t 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."  But such an activity is certainly within the ambit of one of ordinary skill in the art, especially as this individual is presumed to be aware of all relevant prior art.

LG Electronics v. Immervision, Inc. (Fed. Cir. 2022)
Panel: Circuit Judges Newman, Stoll, and Cunningham
Opinion by Circuit Judge Stoll; opinion dissenting in part by Circuit Judge Newman