A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Koninklijke Philips N.V., et al. v. Thales DIS AIS USA LLC, et al., No. 2021-2106 (Fed. Cir. (D. Del.) July 13, 2022). Opinion by Moore, joined by Dyk and Chen.
Philips owns patents it asserts are standard essential in the areas of telecommunications and wireless technologies. Philips alleged that Thales implemented the patented technologies according to European Telecommunications Standards Institute specifications. When negotiations between the parties did not yield an agreed-upon fair, reasonable, and nondiscriminatory (FRAND) license for the patents, Philips filed an infringement and declaratory action against Thales in district court and an ITC action seeking an exclusion order.
Thales responded by filing a breach of contract counterclaim and declaratory counterclaim for a FRAND rate determination, and Thales moved for a preliminary injunction barring Philips from pursuing the ITC action. The district court denied the preliminary injunction, and Thales appealed.
The Federal Circuit affirmed, ruling that the district court did not err in concluding that Thales failed to show it is likely to suffer irreparable harm from the ITC action. The Federal Circuit stated that “the mere possibility or speculation of harm is insufficient.” Specifically, “evidence of speculative harms, such as customers merely expressing concern that a potential future ITC exclusion order could affect Thales’ ability to deliver products down the road, is insufficient to show a likelihood of irreparable harm” to support a preliminary injunction. The court noted that “Thales did not present any evidence that it lost customers, had customers delay purchases, or struggled to acquire new business because of the ongoing ITC proceedings.” The only evidence of harm was “speculative,” which “does not justify the rare and extraordinary relief of a preliminary injunction.”
LG Electronics Inc. v. ImmerVision, Inc., Nos. 2021-2037, -2038 (Fed. Cir. (PTAB) July 11, 2022). Opinion by Stoll, joined by Cunningham. Opinion dissenting in part by Newman.
LG initiated two IPR proceedings challenging claims of an ImmerVision patent directed to capturing and displaying digital panoramic images. LG relied on the “Tada” reference, which claimed priority to a Japanese patent application. LG and its expert relied specifically on Tada’s third embodiment and the expert’s calculations based on that embodiment.
ImmerVision’s expert, however, recognized that Tada’s third embodiment contained errors that appeared to be transcription or copy-and-paste errors stemming from the disclosures in the underlying Japanese priority application. The Board agreed with ImmerVision that Tada’s third embodiment contains “an obvious error” that a person of ordinary skill in the art would have recognized and corrected. With the obvious error corrected, Tada did not satisfy the language of the challenged claims, and therefore, the Board ruled, LG did not meet its burden to show the challenged claims to be unpatentable. LG appealed.
In a divided opinion, the Federal affirmed. First, the court stated that it was undisputed that the data reported in Tada’s third embodiment was erroneous, and it was also undisputed that if the data were corrected the limitations of the challenged claims were not satisfied. Thus, the question presented was “whether substantial evidence supports the Board’s 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.”
The Federal Circuit ruled that substantial evidence supported the Board’s finding. The court’s precedent established that “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 the subject matter.” Applying this standard, the Federal Circuit ruled that the Board reasonably found Tada’s disclosure to contain “an obvious error of a typographical or similar nature that would have been apparent” to skilled artisans.
Judge Newman dissented in part, disagreeing that the error in Tada was “typographical or similar in nature.” In her view, “a typographical or similar error is apparent to the reader and may conveniently be ignored without impeaching the content of the information.” Here, by comparison, the error in Tada was not noticed by any of the patent attorneys during prosecution, by the patent examiner, or by the Board in its institution of the IPR proceedings. The error “was not discovered until an expert witness conducted a dozen hours of experimentation and calculation,” which, according to Judge Newman, means that “the error was not of typographical or similar nature.”