August 8, 2022
After discussing a court’s ability to rewrite patent claim language in view of the Federal Circuit’s decision in Pavo Solutions v. Kingston Technology (Pavo Solutions, Part I), my post last week noted that there was more to the story, including the issue of whether a court could rewrite a patent’s disclosure. Here are a few thoughts on that issue.
On July 11, 2022, the Federal Circuit rendered its decision in LG Electronics v. Immervision, a case stemming from LG’s challenge of Immervision patent claims as obvious in an IPR and the PTAB’s determination that the challenged claims were not obvious. The fight in the IPR, as well as at the Federal Circuit, focused on whether Embodiment 3 in a prior art U.S. patent (Tada) should be accepted as written, which would make it more likely that the claims were obvious, or whether Tada’s disclosure should be rewritten because of “obvious” mistakes, which would make obviousness of the claims less likely. After parsing through competing positions of each side’s expert, the PTAB determined, and the Federal Circuit agreed, that Tada’s disclosure related to Embodiment 3 should be rewritten.
The “obvious” error for Tada’s Embodiment 3 related to properties/characteristics of Embodiment 3 which appeared to be a “cut-and-paste” error from another embodiment in Tada and, thus, erroneously associated with Embodiment 3.
The Federal Circuit noted the standard for reviewing errors in disclosures:
The court in [In re Yale, 434 F.2d 666 (C.C.P.A. 1970)] held 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 subject matter.
Based on this standard, the Federal Circuit determined that errant cutting and pasting had occurred in Tada which would be apparent to one of ordinary skill in the art, so Tada’s Embodiment 3 as written did not render Immervision’s patent claims obvious because such information would be corrected or disregarded upon review.
Before further discussion, a few more interesting facts from the case are:
(1) In Yale, the prior art was a journal article containing an erroneous chemical formula, and the article’s author had submitted a letter to the journal recognizing that the chemical formula was incorrect;
(2) Tada’s U.S. patent was based on a Japanese priority application, and the Japanese application contained correct information for Embodiment 3. The Japanese priority application was incorporated by reference into Tada’s U.S. patent;
(3) Tada never tried to correct the information related to Embodiment 3 in the U.S. patent;
(4) Immervision’s expert spent 10-12 hours to determine what the problem was with Tada’s Embodiment 3 as written; and
(5) Judge Newman’s dissenting opinion in LG Electronics highlighted the author’s letter recognizing the error in Yale and contrasted this acknowledgment with Tada’s failure to correct information related to Embodiment 3 in the U.S. patent. The dissent also highlighted the length of time it took Immervision’s expert to uncover the error.
There is a distinction between the standard for rewriting claims (Pavo Solutions) and the standard for rewriting disclosures (LG Electronics).
Both standards relate to correcting minor errors, such as typographical errors and the like, and are viewed from the perspective of one of ordinary skill in the art. However, the claim rewriting standard is stricter than the disclosure rewriting standard. For claims, they should be rewritten only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims; and the error must be evident from the face of the patent. For disclosures, the standard is simply based on whether the error is one which would be apparent to one of ordinary skill in the art.
If the standard for claims from Pavo Solutions were applied in LG Electronics, wouldn’t the issue be subject to reasonable debate? The experts certainly debated it! And wouldn’t the prosecution history suggest a different interpretation? Tada never changed Embodiment 3 in the U.S. patent, so doesn’t the file history show that it is correct as written? The Pavo Solutions standard very well could lead to a different result in LG Electronics.
Further, as Judge Newman highlighted in her dissent, it took Immervision’s expert a long time (10-12 hours) to figure out the problem – and he is an expert! If the standard is based on the perspective of one of ordinary skill in the art, it presumably would take such a non-expert even longer to deduce the problem, if at all. Shouldn’t these facts and inferences be more compelling evidence that the error in Tada is not “obvious to one of ordinary skill in the art”?
Finally, in the category of hypotheticals, what if Tada did not have a Japanese priority application, or what if the priority application were not incorporated by reference into the U.S. patent? Could Tada have changed its disclosure at the U.S. patent office, or would such a change have been considered to be undisclosed “new matter” in the application and, thus, disallowed by the patent office? If the U.S. patent office would not allow such a change in disclosure, should the courts be able to rewrite it in such a way?
Going forward, it will be interesting to see how often courts rewrite claims and/or disclosures in patents. If you are involved in litigation, it might be worth considering asking a court to rewrite the claims and/or disclosure if you think it would help your case.