July 21, 2022

Clearly, the Disclosure Was an Error

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) finding that claimed subject matter was not disclosed in asserted prior art where the prior art reference contained an "obvious error of a typographical or similar nature that would be apparent to one of ordinary skill in the art," even though the error went unrecognized and uncorrected for 20 years until an expert conducted an extensive analysis. LG Electronics Inc. v. ImmerVision, Inc., Case Nos. 21-2037; -2038 (Fed. Cir. Jul. 11, 2022) (Stoll, Newman, Cunningham, JJ.) (Newman, J., dissenting)

The issue before the Federal Circuit was whether an error in the prior art that remained uncorrected in the public domain for 20 years and took an expert many hours of analysis to uncover, was an obvious error that would meet the standard set in the 1970 Court of Customs and Patent Appeals (CCPA) case In re Yale. Since the CCPA is a predecessor court to the Federal Circuit, its decisions are mandatory authority. Under the Yale standard, "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."

The patent at issue pertains to capturing and displaying panoramic images using an objective lens. The claims require a certain image point distribution function and that 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 expert reconstructed a lens depicted in an embodiment of the asserted prior art using information found in Table 5 of the reference. Based on this reconstruction, LG argued that certain limitations of the claims at issue were found in a prior art patent to Tada, and thus the claims at issue were obvious.

ImmerVision had its own expert attempt to create the same lens model based on the same information. However, ImmerVision's expert noticed something was wrong, as the resulting output image from the lens was distorted. Upon further investigation, ImmerVision's expert discovered that the disclosure in Tada Table 5, on which LG's expert relied, was intended to correspond to a different embodiment. The inconsistency was caused by a transcription error from the Japanese priority application in terms of the embodiment associated with Table 5. It was undisputed that when the correct values were used, the subject matter was not disclosed.

The question on appeal was whether the Board correctly held that the error in Tada 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 to meet the Yale standard. The Federal Circuit held that the Board correctly identified several aspects of Table 5 of Tada that would have alerted a person of ordinary skill in the art of the obvious error. These aspects included the different Table 5 values recited in the Japanese priority application, internal inconsistencies between table values within Tada and duplicative disclosures between Table 5 and another table in Tada.

The Federal Circuit held that even though the error was not immediately recognized, it was nonetheless 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 [erroneous disclosure] cannot be said to disclose [claimed subject matter]."

The Federal Circuit rejected LG's argument that the undisputed errors in Tada were not obvious. In support, LG suggested that the errors in Tada were not immediately recognized, as evidenced by the 10 to 12 hours it took ImmerVision's expert to fully uncover the error. LG further argued that the error remained uncorrected and in the public domain for more than 20 years. However, the Court reiterated that the standard is not whether the error would have been immediately recognized, but rather whether the error is obvious. The Court rejected LG's argument that the Yale standard is limited to typographical errors, holding that "[t]he distinction between the typographical error in Yale and the copy-and-paste error here is a distinction without a difference."

In her dissent, Judge Newman opined that error was not "typographical or similar in nature, for its existence was not discovered until an expert witness conducted a dozen hours of experimentation and calculation." In Newman's view, "a typographical or similar error is [one that is] apparent to the reader and may conveniently be ignored without impeaching the content of the information."

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