Electronics Inc. v. Immervision, Inc., 2021-2037, 2021-2038 (Fed. Cir. 7/11/2022)
RICK NEIFELD
Interesting case on probative value of errors in a prior art reference relied upon to invalidate a claim.
This is a decision on appeals from PTAB cases IPR2020-00179, IPR2020-00195. The Board concluded that LG did not meet its burden to prove the challenged claims would have been obvious by a preponderance of evidence. LG appealed. A majority of the Federal Circuit panel consisting of Judges Stoll and Cunningham affirmed. Judge Newman dissented.
In dissent, Judge Newman wrote:
The court today finds an “error of a typographical or similar nature” in the specification of the Tada reference and rules that because the error is “obvious” the erroneous portion of the Tada reference1 is eliminated as prior art. Maj. Op. at 16–17. I cannot agree that this error is typographical or similar in nature, for its existence was not discovered until an expert witness conducted a dozen hours of experimentation and calculation. Appx2428 (LG Elecs. Inc. . ImmerVision, Inc., No. IPR2020-00179, (P.T.A.B. Oct. 1, 2020), Aikens Dep. 137:3–138:3, Ex. 1018). [Electronics Inc. v. Immervision, Inc., 2021-2037, 2021-2038 (Fed. Cir. 7/11/2022)(Newman, dissenting).]
The majority decided two legal issues, which I phrase as follows.
Legal issue: 35 USC 102(a), description in a publication, erroneous disclosure, obvious error, whether there is a temporal requirement on recognition that an erroneous disclosure is erroneous, for that erroneous disclosure to be an obvious error.
The Federal Circuit majority held that there was no temporal requirement in recognizing an erroneous disclosure to be an obvious error, and therefore the kind of error that does not support disclosure of a claim limitation.
Legal issue: 35 USC 102(a), description in a publication, erroneous disclosure, obvious error, the kind of erroneous disclosures that can be obvious errors
The Federal Circuit majority held that Yale imposes no limit to typographical errors, per se, extending the kind of erroneous disclosures that may be obvious errors and therefore errors of a type that do not support disclosure of a claim limitation, to copy-and-paste errors.
Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
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