LG Electronics Inc. v. ImmerVision, Inc.

• Decision Date: 11 May 2021
• Docket Number: 844,Patent 6,IPR2020-00179,990 B2
• Parties: LG ELECTRONICS INC., Petitioner, v. IMMERVISION, INC., Patent Owner.
• Court: Patent Trial and Appeal Board

LG ELECTRONICS INC., Petitioner,
v.
IMMERVISION, INC., Patent Owner.

IPR2020-00179

Patent 6, 844, 990 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 11, 2021

Determining No Challenged Claims Unpatentable 35 U.S.C. § 318(a)

Before KRISTTNA M. KALAN, WESLEY B. DERRICK, and KIMBERLY McGRAW, Administrative Patent Judges.

JUDGMENT FINAL WRITTEN DECISION

DERRICK, Administrative Patent Judge.

I. INTRODUCTION

In this inter partes review, LG Electronics Inc. ("Petitioner") challenges the patentability of claim 5 of U.S. Patent No. 6, 844, 990 B2 (Ex. 1001, "the '990 patent"), owned by ImmerVision, Inc. ("Patent Owner").

We have jurisdiction to hear this inter partes review under 35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has not shown, by a preponderance of the evidence, that claim 5 of the '990 patent is unpatentable.

A. Procedural History

On November 27, 2019, Petitioner requested an inter partes review of claim 5 of the'990 patent. Paper 2 ("Pet."). Patent Owner filed a Preliminary Response. Paper 5 ("Prelim. Resp."). On May 13, 2020, we instituted an inter partes review of the challenged claim on all grounds raised in the Petition. Paper 6 ("Dec."). Following institution, Patent Owner filed a Patent Owner Response (Paper 12, "PO Resp."), Petitioner filed a Reply to the Patent Owner Response (Paper 16, "Pet. Reply"), and Patent Owner filed a Sur-Reply to Petitioner's Reply (Paper 17, "PO Sur-Reply).

Petitioner relies on the declaration testimony of Russell Chipman, Ph.D. (Exs. 1008, 1017, 1019) to support the Petition. Patent Owner took cross-examination via deposition of Dr. Chipman (Ex. 2002). Patent Owner relies on the declaration testimony of David Aikens (Ex. 2009). Petitioner took cross-examination via deposition of Mr. Aikens (Ex. 1018).

Oral hearing was requested by both parties. Papers 18, 19. We heard argument on February 8, 2021, and a transcript of the hearing has been entered into the record. Paper 25 ("Tr.").

B. Real Parties-in-Interest

Petitioner LG Electronics Inc. identifies LG Electronics U.S.A., Inc. and LG Innotek Co. Ltd. as additional real parties-in-interest. Pet. 2. Patent Owner ImmerVision, Inc., identifies itself as the real party-in-interest. Paper 4, 2. The parties do not raise any issues about real parties-in-interest.

C Related Proceedings

The parties identify two pending district court cases involving the '990 patent: ImmerVision, Inc. v. LG Electronics U.S.A., No. 1-18-cv-01630 (D. Del.) and ImmerVision, Inc. v. LG Electronics U.S.A., No. 1-18-cv-01631 (D. Del.). Pet. 2; Paper 4, 2-3. The '990 patent is also the subject of an inter partes review in IPR2020-00195. See IPR2020-00195, Paper 6.

In addition, the '990 patent: (1) was the subject of Ex Parte Reexamination Control No. 90/013, 410; (2) was challenged in an inter partes proceeding, Panasonic System Networks Co., Ltd. v. 6115187 Canada Inc., IPR2014-01438; and (3) was the subject of three other district court cases that are no longer pending. See Pet. 2-3; see also Panasonic System Networks Co., Ltd. v. 6115187 Canada Inc., IPR2014-01438, Paper 11 (PTAB Nov. 26, 2014) (terminating proceeding prior to institution following settlement).

D. The '990 Patent (Ex. 1001)

The '990 patent is titled "Method for Capturing and Displaying a Variable Resolution Digital Panoramic Image" and issued on January 18, 2005, from an application filed on November 12, 2003. Ex. 1001, codes (22), (45), (54). The application for the '990 patent is a continuation of application No. PCT/FR02/01588, filed on May 10, 2002, and claims priority to foreign application FR 01 06261, filed May 11, 2001. Id. at codes (30), (63).

The '990 patent relates to capturing a digital panoramic image that includes using a panoramic objective lens having "a distribution function of the image points that is not linear relative to the field angle [a] of the object points of the panorama," where the "distribution function Fdc . . . determines the relative distance dr of an image point in relation to the center of the image disk according to the field angle a of the corresponding object point." Id. at code (57), 2:30-34 (as corrected by Jan. 18, 2005, Cert, of Correction). The image obtained using such a panoramic objective lens has at least one zone that is expanded and another zone that is compressed. Id. at code (57). The '990 patent further explains that an image zone is "expanded" when it covers a greater number of pixels on an image sensor than it would with a linear distribution lens. Id. at 3:66-4:10. The '990 patent also provides that an "expanded" zone and "compressed" zone can be illustrated by comparison to a linear distribution function, with a slope greater than that of the linear distribution indicating an expanded zone and a lesser slope indicating a compressed zone. Id. at 9:13-35; see also id. at 2:30-42 (describing how "Figure 4B represents the shape of the distribution function Fdc of a classical objective lens," of ideal form, "a straight line of gradient K ... in which the constant K is equal to 0.111 degree"1 (1/90°)"). Figure 9, reproduced below, depicts an image point distribution of a lens having a compressed zone between

(Image Omitted) Id., Fig. 9 (depicting plot of a non-linear distribution function of a panoramic objective lens). The patent further provides for correcting the non-linearity of the panoramic image initially obtained when using such lens. Id at code (57).

The '990 patent was the subject of an ex parte reexamination. Id. at 25-27 (Ex Parte Reexamination Certificate (10588th)). The Reexamination Request-Control No. 90/013, 410-was filed November 26, 2014. Id at 25; Ex. 1003, 328-339 ("Request by Patent Owner for Ex Parte Reexamination of U.S. Patent No. 6, 844, 990"). Patent Owner cancelled claim 1 by way of preliminary amendment that accompanied its request for ex parte reexamination of claims 1-4, 6, 7, 10, 11, 15-20, 22, 23, and 25. See Pet. 17-18; Ex. 1003, 330, 341.

E. The Challenged Claim

Challenged claim 5 incorporates the limitations of cancelled claim 1, from which it depends. See MPEP § 2260.01 ("the content of the canceled base claim . . . [is] available to be read as part of the confirmed or allowed dependent claim"). Both claims are reproduced below.

1. A method for capturing a digital panoramic image, by projecting a panorama onto an image sensor by means of a panoramic objective lens, the panoramic objective lens having an image point distribution function that is not linear relative to the field angle of object points of the panorama the distribution function having a maximum divergence of at least ±10% compared to a linear distribution function such that the panoramic image obtained has at least one substantially compressed zone

Ex. 1001, 19:28-37.

5. The method according to claim 1, wherein 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

Id. at 19:49-52.

F. Instituted Grounds of Unpatentability at Issue

We instituted trial on all grounds of unpatentability proposed by Petitioner, as shown below:

Claim Challenged	35 U.S.C. §[1]	Reference(s)/Basis
5	103	Tada[2]
5	103	Tada, Nagaoka[3]
5	103	Tada, Baker[4]

II. ANALYSIS

A. Principles of Law

A claim is unpatentable under § 103 if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17-18(1966).

Regarding the scope and content of the prior art, "[w]hat a reference teaches is a question of fact." In re Beattie, 914 F.2d 1309, 1311 (Fed. Cir. 1992). A reference is prior art for what it discloses, even if it is in error, unless the error is an "obvious error," in which case "it cannot be said to describe or suggest [what is disclosed in error] to those in the art." In re Yale, 434 F.2d 666, 668-69 (CCPA 1970) (holding that an error in the statement of a chemical formula would have been obvious to one of ordinary skill in the art and thus would not have put them in possession of the compound because they would have disregarded it as an error or replaced it with the correct chemical formula); see also In re Clark, 420 Fed.Appx. 994, 998 (Fed. Cir. 2011) (nonprecedential) (holding that "absent an obvious error on the face of a reference, a reference is prior art for what it discloses" and that the Board did not err in relying on such a disclosure where there was "nothing in the . . . publication indicating that the [relied-on] statements . . . were in error.").

Additionally, the obviousness inquiry typically requires an analysis of "whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness")); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar Textilfarben...