Newman dissents in LG Electronics on the "facts" surrounding the error in the case
The introduction to the decision:
This appeal requires us to consider how to treat a prior art reference in which the alleged teaching of a claim element would be understood by a skilled artisan not to be an actual teaching, but rather to be an obvious error of a typographical or similar nature. LG Electronics Inc. appeals from the United States Patent Trial and Appeal Board’s final written decisions in a pair of inter partes review proceedings challenging claims 5 and 21 of U.S. Patent No. 6,844,990. In both proceedings, the Board found that LG had not shown the challenged claims were unpatentable. Because substantial evidence supports the Board’s finding that prior art disclosure critical to both of LG’s petitions for inter partes review was an apparent error that would have been disregarded or corrected by a person of ordinary skill in the art, we affirm.
Judge Newman, dissenting in part
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. v. ImmerVision, Inc., No. IPR2020-00179, (P.T.A.B. Oct. 1, 2020), Aikens Dep. 137:3–138:3, Ex. 1018). The appearance of a few of the same numbers in two different tables in the Tada reference provides no information as to which numbers and tables are correct and which may be in error. In contrast, a typographical or similar error is apparent to the reader and may conveniently be ignored without impeaching the content of the information. The error in the Tada reference cannot properly be deemed typographical or similar. The events that preceded the expert’s discovery of the error in the Tada reference cannot be ignored. The possibly erroneous numbers in the Tada tables were not noticed by any of the patent attorneys throughout the prosecution of Tada’s U. S. application. The now “obvious” error was not noticed by the patent examiner during a complex prosecution in which claims were amended and prior art distinguished. The purportedly “typographical or similar” error was not included in the Certificate of Correction that was obtained for typographical errors in the issued Tada patent. This error was not noticed by two distinct Patent Trial and Appeal Boards in instituting these two inter partes review (“IPR”) petitions, despite the technological expertise of the Board. The error in Tada Table 5 was not corrected anywhere, even after 20 years of publication. Not until an expert witness conducted experiments and compared the U. S. application with the Japanese Priority document2 did anyone discover the possibly erroneous numbers in Table 5. Appx2422–2430; Appx3030–3042. The specifics of what led the expert, Mr. Aikens, to discover the erroneous values in Table 5 also cast doubt on whether the error may be deemed “obvious and apparent.” Mr. Aikens testified that he had fully modeled Tada’s Embodiment 3—relying on data from Table 5—without noticing the error. Appx2421–22 (Aikens Dep. 130:8–22). It was only after his model was completed that he noticed the lens created a distorted image, leading him to presume there was perhaps some error in Tada. Appx2422 (Aikens Dep. 131:3–7). At this point in his experimentation, he did not know what the error was, and certainly did not know how to correct the error; he only suspected that an error existed somewhere. Appx2423 (Aikens Dep. 132:2–10). Upon realizing there was likely an error, Mr. Aikens undertook to discover it. Id. at 132:7–10 (“I wanted to understand how this lens could be so wrong and be in the patent. It just didn’t make sense to me.”). Mr. Aikens testified that he required several additional hours to figure out if there actually was an error in the reference and what that error was. Id. at 132:11–13. First, Mr. Aikens observed that the physical surface shape of his Embodiment 3 lens model did not match the example lens depicted in Tada’s Figure 11. Appx2424 (Aikens Dep. 133:11–14); Appx3042 (LG Elecs. Inc. v. ImmerVision, Inc., No. IPR2020-00179, (P.T.A.B. Aug. 4, 2020), Aikens Decl. ¶ 74, Ex. 2009). This suggested that an error existed, but not where the error was or how to correct it. Mr. Aikens then performed various tasks such as comparing the diagrams of the aberrations, astigmatism, and distortion for Embodiment 3 to his model, and fully modeling two other embodiments—Embodiment 1 and Embodiment 2. Appx2425 (Aikens Dep. 134:12–15). None of these steps showed where the purported “obvious error” was located. Only after modeling the other lens embodiments did Mr. Aikens finally observe that the aspherical values from Table 3, which correspond to Tada’s Embodiment 2, “were exactly the same as in Table 5.” Id. at 134:18–19. Mr. Aikens testified that at this point of his experimentation he suspected there was an error in the aspherical values in Table 5, but he had yet to determine what was in error. Id. at 134:19–21. To investigate further, Mr. Aikens compared the sag table generated from his lens model with sag Table 6 from the Tada reference. He found they did not match, indicating that an error existed; however, he still did not know what the error was, nor how to correct it. Appx2425–26 (Aikens Dep. 134:22–135:4); Appx3032–35, Appx3042 (Aikens Decl. ¶¶ 60–62, 74). Mr. Aikens then compared the values in Table 9 to Table 5 and noticed that upon performing the required calculations, the aspherical values did not match between these two tables. Appx2426– 27 (Aikens Dep. 135:9–136:15). It was here, for the first time, that Mr. Aikens testified that he could confirm there actually was an error in the Tada reference. Id. at 136:9– 10. At this juncture Mr. Aikens felt confident that Table 5 contained erroneous information, but he still did not have the information to correct it. Appx2426–27 (Aikens Dep. 135:21–136:1) (“Unfortunately, Tada didn’t include a constraint on his A10 term so that I had to optimize to find.”). Mr. Aikens testified that he was finally able to correct and confirm the error when he obtained the Japanese Priority Application. Appx2420 (Aikens Dep. 129:7–11); Appx3042 (Aikens Decl. ¶ 74). The Japanese application had the correct aspherical values in Table 5, as confirmed by a skilled expert in this technology, after many hours of corrective effort that included fully modeling three separate embodiments of the lens. In sum, the error was not of “typographical or similar nature.” The facts of this case readily distinguish it from In re Yale, 434 F.2d 666 (CCPA 1970), where our predecessor Court of Customs and Patent Appeals found that the inclusion of the molecule CF3CF2CHClBr in a list of anesthetics was an obvious error. In Yale the CCPA explained that CF3CF2CHClBr was not a known compound and that the obviously intended compound was CF3CHClBr, a wellknown anesthetic. This error was acknowledged by the authors of the article. As the panel majority recounts, “any number” of the pieces of evidence mentioned by the CCPA in Yale would “‘individually or cumulatively . . . alert one of ordinary skill in the art to the existence’ of the error.” Maj. Op. at 14 (quoting Yale, 434 F.2d at 669). However, the evidence in Yale did not require calculations or experimentation. Yale, 434 F.2d at 667. The same cannot be said about the error in Tada, for without the Japanese Priority Application, there is no source of the correct information. In Tada, the error in Table 5 is not discoverable unless measurements are conducted, the embodiments are recreated, equations are recalculated, and computations are performed. Without performing these operations, the identity of a few values in both the tables does not establish error. Moreover, the tables do not suggest which table might be incorrect. As Mr. Aikens demonstrated, without modeling Embodiment 3, Table 5 cannot be compared to sag Table 6 or Figs. 11–15. In contrast, in Yale it was obviously an error to replace the known chemical anesthetic compound CF3CHClBr in Fig. 1 with the unknown chemical compound CF3CF2CHClBr in Fig. 3 and list both compounds as having the same property. The CCPA reasoned that a chemist of ordinary skill would deem it extremely unlikely that these two chemicals would have the same LogPf (partial pressure) value. Yale, 434 F.2d at 667. Although the panel majority finds analogy in the view that it is highly unlikely that the Tada embodiments would have the same aspherical values, Maj. Op. at 16, such that the listing of the same values is an obvious error, there is no intrinsic reason why two different lenses could not have the same aspherical values. As Mr. Aikens remarked, “[a]nd so I thought, okay, well, maybe there’s a typo on the – on the aspherics, or maybe Tada is not very good.”). Appx2425 (Aikens Dep. 134:10–12). Even the Tada patent states that “[t]he basic structure of a lens system of the third embodiment is substantially the same as that of the second embodiment. Numerical data regarding the third embodiment is shown in table 5 below.” ’999 Patent col. 8 ll. 59–64. That Table 3 and Table 5 have some of the same aspherical values does not readily alert a person of ordinary skill that Table 5 contains an obvious error of “typographical or similar nature.” The facts in Yale are not readily analogous. An important consideration in Yale was that the molecule CF3CF2CHClBr was not a known chemical compound at the time. The CCPA explained that the inclusion on a table of known anesthetics of a compound that did not exist would be recognized as an error, as was shown in correspondence. Yale, 434 F.2d at 668–69. I agree with the panel majority that Yale establishes the correct standard to determine if an error would be obvious to a person of ordinary skill in the field. However, I do not agree with the majority’s application of this standard to the facts herein. An “obvious error” should be apparent on its face and should not require the conduct of experiments or a search for possibly conflicting information to determine whether error exists. When a reference contains an erroneous teaching, its value as prior art must be determined. The error in the Tada reference is plainly not a “typographical or similar error,” for the error is not apparent on its face, and the correct information is not readily evident. It 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. The foundation of the “typographical or similar” standard is that the error is readily recognized as an error. I am concerned that we are unsettling long-standing law, and thus I respectfully dissent in part.
This appeal requires us to consider how to treat a prior art reference in which the alleged teaching of a claim element would be understood by a skilled artisan not to be an actual teaching, but rather to be an obvious error of a typographical or similar nature. LG Electronics Inc. appeals from the United States Patent Trial and Appeal Board’s final written decisions in a pair of inter partes review proceedings challenging claims 5 and 21 of U.S. Patent No. 6,844,990. In both proceedings, the Board found that LG had not shown the challenged claims were unpatentable. Because substantial evidence supports the Board’s finding that prior art disclosure critical to both of LG’s petitions for inter partes review was an apparent error that would have been disregarded or corrected by a person of ordinary skill in the art, we affirm.
Judge Newman, dissenting in part
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. v. ImmerVision, Inc., No. IPR2020-00179, (P.T.A.B. Oct. 1, 2020), Aikens Dep. 137:3–138:3, Ex. 1018). The appearance of a few of the same numbers in two different tables in the Tada reference provides no information as to which numbers and tables are correct and which may be in error. In contrast, a typographical or similar error is apparent to the reader and may conveniently be ignored without impeaching the content of the information. The error in the Tada reference cannot properly be deemed typographical or similar. The events that preceded the expert’s discovery of the error in the Tada reference cannot be ignored. The possibly erroneous numbers in the Tada tables were not noticed by any of the patent attorneys throughout the prosecution of Tada’s U. S. application. The now “obvious” error was not noticed by the patent examiner during a complex prosecution in which claims were amended and prior art distinguished. The purportedly “typographical or similar” error was not included in the Certificate of Correction that was obtained for typographical errors in the issued Tada patent. This error was not noticed by two distinct Patent Trial and Appeal Boards in instituting these two inter partes review (“IPR”) petitions, despite the technological expertise of the Board. The error in Tada Table 5 was not corrected anywhere, even after 20 years of publication. Not until an expert witness conducted experiments and compared the U. S. application with the Japanese Priority document2 did anyone discover the possibly erroneous numbers in Table 5. Appx2422–2430; Appx3030–3042. The specifics of what led the expert, Mr. Aikens, to discover the erroneous values in Table 5 also cast doubt on whether the error may be deemed “obvious and apparent.” Mr. Aikens testified that he had fully modeled Tada’s Embodiment 3—relying on data from Table 5—without noticing the error. Appx2421–22 (Aikens Dep. 130:8–22). It was only after his model was completed that he noticed the lens created a distorted image, leading him to presume there was perhaps some error in Tada. Appx2422 (Aikens Dep. 131:3–7). At this point in his experimentation, he did not know what the error was, and certainly did not know how to correct the error; he only suspected that an error existed somewhere. Appx2423 (Aikens Dep. 132:2–10). Upon realizing there was likely an error, Mr. Aikens undertook to discover it. Id. at 132:7–10 (“I wanted to understand how this lens could be so wrong and be in the patent. It just didn’t make sense to me.”). Mr. Aikens testified that he required several additional hours to figure out if there actually was an error in the reference and what that error was. Id. at 132:11–13. First, Mr. Aikens observed that the physical surface shape of his Embodiment 3 lens model did not match the example lens depicted in Tada’s Figure 11. Appx2424 (Aikens Dep. 133:11–14); Appx3042 (LG Elecs. Inc. v. ImmerVision, Inc., No. IPR2020-00179, (P.T.A.B. Aug. 4, 2020), Aikens Decl. ¶ 74, Ex. 2009). This suggested that an error existed, but not where the error was or how to correct it. Mr. Aikens then performed various tasks such as comparing the diagrams of the aberrations, astigmatism, and distortion for Embodiment 3 to his model, and fully modeling two other embodiments—Embodiment 1 and Embodiment 2. Appx2425 (Aikens Dep. 134:12–15). None of these steps showed where the purported “obvious error” was located. Only after modeling the other lens embodiments did Mr. Aikens finally observe that the aspherical values from Table 3, which correspond to Tada’s Embodiment 2, “were exactly the same as in Table 5.” Id. at 134:18–19. Mr. Aikens testified that at this point of his experimentation he suspected there was an error in the aspherical values in Table 5, but he had yet to determine what was in error. Id. at 134:19–21. To investigate further, Mr. Aikens compared the sag table generated from his lens model with sag Table 6 from the Tada reference. He found they did not match, indicating that an error existed; however, he still did not know what the error was, nor how to correct it. Appx2425–26 (Aikens Dep. 134:22–135:4); Appx3032–35, Appx3042 (Aikens Decl. ¶¶ 60–62, 74). Mr. Aikens then compared the values in Table 9 to Table 5 and noticed that upon performing the required calculations, the aspherical values did not match between these two tables. Appx2426– 27 (Aikens Dep. 135:9–136:15). It was here, for the first time, that Mr. Aikens testified that he could confirm there actually was an error in the Tada reference. Id. at 136:9– 10. At this juncture Mr. Aikens felt confident that Table 5 contained erroneous information, but he still did not have the information to correct it. Appx2426–27 (Aikens Dep. 135:21–136:1) (“Unfortunately, Tada didn’t include a constraint on his A10 term so that I had to optimize to find.”). Mr. Aikens testified that he was finally able to correct and confirm the error when he obtained the Japanese Priority Application. Appx2420 (Aikens Dep. 129:7–11); Appx3042 (Aikens Decl. ¶ 74). The Japanese application had the correct aspherical values in Table 5, as confirmed by a skilled expert in this technology, after many hours of corrective effort that included fully modeling three separate embodiments of the lens. In sum, the error was not of “typographical or similar nature.” The facts of this case readily distinguish it from In re Yale, 434 F.2d 666 (CCPA 1970), where our predecessor Court of Customs and Patent Appeals found that the inclusion of the molecule CF3CF2CHClBr in a list of anesthetics was an obvious error. In Yale the CCPA explained that CF3CF2CHClBr was not a known compound and that the obviously intended compound was CF3CHClBr, a wellknown anesthetic. This error was acknowledged by the authors of the article. As the panel majority recounts, “any number” of the pieces of evidence mentioned by the CCPA in Yale would “‘individually or cumulatively . . . alert one of ordinary skill in the art to the existence’ of the error.” Maj. Op. at 14 (quoting Yale, 434 F.2d at 669). However, the evidence in Yale did not require calculations or experimentation. Yale, 434 F.2d at 667. The same cannot be said about the error in Tada, for without the Japanese Priority Application, there is no source of the correct information. In Tada, the error in Table 5 is not discoverable unless measurements are conducted, the embodiments are recreated, equations are recalculated, and computations are performed. Without performing these operations, the identity of a few values in both the tables does not establish error. Moreover, the tables do not suggest which table might be incorrect. As Mr. Aikens demonstrated, without modeling Embodiment 3, Table 5 cannot be compared to sag Table 6 or Figs. 11–15. In contrast, in Yale it was obviously an error to replace the known chemical anesthetic compound CF3CHClBr in Fig. 1 with the unknown chemical compound CF3CF2CHClBr in Fig. 3 and list both compounds as having the same property. The CCPA reasoned that a chemist of ordinary skill would deem it extremely unlikely that these two chemicals would have the same LogPf (partial pressure) value. Yale, 434 F.2d at 667. Although the panel majority finds analogy in the view that it is highly unlikely that the Tada embodiments would have the same aspherical values, Maj. Op. at 16, such that the listing of the same values is an obvious error, there is no intrinsic reason why two different lenses could not have the same aspherical values. As Mr. Aikens remarked, “[a]nd so I thought, okay, well, maybe there’s a typo on the – on the aspherics, or maybe Tada is not very good.”). Appx2425 (Aikens Dep. 134:10–12). Even the Tada patent states that “[t]he basic structure of a lens system of the third embodiment is substantially the same as that of the second embodiment. Numerical data regarding the third embodiment is shown in table 5 below.” ’999 Patent col. 8 ll. 59–64. That Table 3 and Table 5 have some of the same aspherical values does not readily alert a person of ordinary skill that Table 5 contains an obvious error of “typographical or similar nature.” The facts in Yale are not readily analogous. An important consideration in Yale was that the molecule CF3CF2CHClBr was not a known chemical compound at the time. The CCPA explained that the inclusion on a table of known anesthetics of a compound that did not exist would be recognized as an error, as was shown in correspondence. Yale, 434 F.2d at 668–69. I agree with the panel majority that Yale establishes the correct standard to determine if an error would be obvious to a person of ordinary skill in the field. However, I do not agree with the majority’s application of this standard to the facts herein. An “obvious error” should be apparent on its face and should not require the conduct of experiments or a search for possibly conflicting information to determine whether error exists. When a reference contains an erroneous teaching, its value as prior art must be determined. The error in the Tada reference is plainly not a “typographical or similar error,” for the error is not apparent on its face, and the correct information is not readily evident. It 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. The foundation of the “typographical or similar” standard is that the error is readily recognized as an error. I am concerned that we are unsettling long-standing law, and thus I respectfully dissent in part.
posted by Lawrence B. Ebert at 2:47 PM
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