IP Law Daily PTAB lacked statutory authority to find video editing claims indefinite in IPR
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Tuesday, February 4, 2020

PTAB lacked statutory authority to find video editing claims indefinite in IPR

By Thomas Long, J.D.

However, the Board erred in declining to decide whether the challenged claims were anticipated or obvious in light of prior art.

The Patent Trial and Appeal Board did not have statutory authority to rule that challenged claims of a patent related to editing streamed videos were unpatentable for indefiniteness, even though it had declined to reach a decision as to anticipation or obviousness because it could not determine the scope of the claims, the U.S. Court of Appeals for the Federal Circuit has held. The court rejected arguments by inter partes review (IPR) petitioner Samsung that the Board could issue a final written decision invalidating the claims under Patent Act Section 112, even though that section was excluded from the range of grounds that could be asserted in an IPR petition. However, the Board erred by declining to make a decision on Samsung’s arguments under Sections 102 and 103 because it incorrectly found a key claim term to be a "means-plus-function" claim. The Board was instructed on remand to decide whether it could find the challenged claims invalid for anticipation or obviousness even if they conflated elements of both an apparatus and a method (Samsung Electronics America, Inc. v. Prisua Engineering Corp., February 4, 2020, Bryson, W.).

Patent at issue. U.S. Patent No. 8,650,591 ("the ’591 patent"), owned by Prisua Engineering Corp. and entitled "Video Enabled Digital Devices for Embedding User Data in Interactive Applications," is directed to "generating an edited video data stream from an original video stream" by "substituting at least one object ... in said original video stream by at least a different object." For example, a user can insert a face of the user’s choice to replace a face originally appearing in a video.

At issue on appeal were claims 1–4, 8, and 11, which are directed to methods and apparatuses for "generating a displayable edited video data stream from an original video data stream." A key question before the Federal Circuit was the meaning of a claim limitation, "digital processing unit." Claim 1 disclosed that the digital processing unit is used to perform various functions along with a data entry device, including identifying and extracting selected images from the source video and substituting a new, spatially matched image in the edited video.

Infringement dispute. In 2016, Prisua sued Samsung Electronics America, Inc., and several other Samsung entities for patent infringement. According to Prisua, several Samsung devices, including smartphones, contained a feature called "Best Face" that infringed claims 1, 3, 4, and 8 of the ’591 patent. The "Best Face" feature allowed the accused devices to capture a burst of images and then replace unwanted facial images, such as images captured when someone was blinking, with better images from other frames in the same burst.

Inter partes review. After the lawsuit was filed, Samsung petitioned for IPR of claims 1–4, 8, and 11 of the ’591 patent. Samsung alleged four separate grounds, but the Board initially decided to review only whether a U.S. patent application publication ("Sitrick") rendered claim 11 obvious. The Board declined to institute review of claims 1–4 and 8 on any ground because it concluded that it could not determine the scope of those claims.

In the Board’s view, it was "unclear whether claim 1 covers, for example, an apparatus that includes a data entry device capable of being operated by a user to select the at least one pixel, or covers only the user actually operating the data entry device to select the at least one pixel." For this reason, the Board concluded that claim 1 was indefinite. The Board also determined that claim 1 was indefinite because its "digital processing unit" limitation "invoke[d] § 112, sixth paragraph," and the petition failed to identify any corresponding structure. The Board found that claims 2–4 and 8, which depended from claim 1, were indefinite for the same reasons. Because the Board determined that it was unable to construe claim 1 or dependent claims 2–4 and 8, it decided that Samsung had not established a reasonable likelihood of prevailing in showing that claims 1–4 and 8 were unpatentable.

While the review was pending, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, in which the Court held that when the USPTO initiates an inter partes review (IPR), it must it resolve all of the claims in the case and may not choose to limit its review to only some of them. Accordingly, the Board modified its institution decision to include all the challenged claims and all the grounds presented in the petition, and it permitted limited supplemental briefing on the new issues.

In its final written decision, the Board again decided that claims 1–4 and 8 were indefinite. The Board also again held that claim 1 and its dependent claims invoked section 112, paragraph 6, for the "digital processing unit" element, and that because there was no corresponding structure in the specification, the Board could not apply the prior art to the claims. The Board therefore held that Samsung had not established that claims 1–4 and 8 were unpatentable. Finally, the Board determined that claim 11 was unpatentable because all of its limitations would have been obvious in light of Sitrick, including the "digital processing unit" limitation.

Arguments on appeal. On appeal, Samsung argued that the Board should have canceled claims 1–4 and 8 for indefiniteness. In the alternative, according to Samsung, the Board should have assessed whether the claims would have been anticipated or obvious in view of the cited prior art. Prisua cross-appealed from the Board’s ruling that claim 11 was unpatentable for obviousness.

Indefiniteness. The Federal Circuit held that the IPR statute does not authorize the Board to cancel challenged claims for indefiniteness, noting that in Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court said the USPTO would be acting "outside its statutory limits" by "canceling a patent claim for ‘indefiniteness under § 112’ in inter partes review." The Federal Circuit had held in a number of prior decisions that, in 35 U.S.C. § 318(a), Congress expressly limited the scope of IPR to a subset of grounds that can be raised under 35 U.S.C. §§ 102 and 103. These statements were not dicta, the court said, rejecting Samsung’s argument that although the Board may not institute IPR on grounds of indefiniteness, once it has instituted review, it can find claims unpatentable for indefiniteness. Nor was the Board authorized to cancel claims for indefiniteness on its own initiative. Under the statutory scheme for IPRs, the petitioner, not the Director of the USPTO, defines the contours of review.

Samsung contended that Patent Act Section 318(b)—the statutory provision on final written decisions in IPRs—the Board had wider latitude to invalidate a claim in a final written decision than the permissible scope of the petition and the institution decision. The Federal Circuit did not agree. "The problem with that argument is that it divorces the final written decision provision, section 318(a), from the rest of the inter partes review statute," said the court. Moreover, although the statute permitted the Board to review newly added claims (that is, claims added by the patentee during review under Section 316(d)) under Section 112, the statutory provisions governing challenged claims in an IPR differed importantly from those governing substitute claims. In the Federal Circuit’s view, Section 316(d) did not provide support for Samsung’s argument.

Nor did the post-grant review statute support Samsung’s argument that claims can be canceled as indefinite at the conclusion of an IPR proceeding. Unlike an IPR petition, pursuant to 35 U.S.C. § 321 a petition for post-grant review may be based on "any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim)." According to the Federal Circuit, Congress’s use of the word "patentability" in the final written decision provision for IPRs and post-grant reviews, respectively, refers to the previously defined scope of the particular review in question. Accordingly, the court rejected Samsung’s appeal regarding claims 1–4 and 8.

Anticipation or obviousness. Samsung next contended that the Board’s analysis of the "digital processing unit" limitation of the challenged claims was incorrect and that the Board was not prevented from assessing the patentability of claims 1 and 4–8 under Section 102 or 103. The court agreed with Samsung that the term "digital processing unit" was not a "means-plus-function" limitation subject to analysis under section 112, paragraph 6. "The Board pointed to no evidence that a person skilled in the relevant art would regard the term ‘digital processing unit’ as purely functional," the court said. "In fact, Prisua argued to the Board, based on testimony from its expert (the inventor), that the digital processing unit recited in the claims is ‘an image processing device that people in the art are generally familiar with.’" In the court’s view, as it was used in the ’591 patent, the term "digital processing unit" was a stand-in for a "general purpose computer" or a "central processing unit," which would be understood as a reference to structure, not simply any device that can perform a particular function. The court noted that the Board had found similarly with respect to the scope of the same claim term in claim 11. The court therefore rejected the Board’s conclusion that the term "digital processing unit," as used in claim 1, invoked means-plus-function claiming, and that for that reason claims 1 and 4–8 cannot be analyzed for anticipation or obviousness.

The court remanded for further proceedings. The Board was directed to address Samsung’s argument that the Board may analyze the patentability of a claim even if that claim is indefinite because it conflates elements of both an apparatus and a method. The Federal Circuit explained that this finding of indefiniteness does not necessarily preclude the Board from addressing the patentability of the claims on Section 102 and 103 grounds.

Obviousness of claim 11. The court affirmed the Board’s order holding claim 11 of the ’591 patent invalid for obviousness over Sitrick. Prisua contended that Sitrick did not disclose the claim’s "capturing a user input video data stream" limitation. However, Prisua did not properly raise that issue before the Board. None of the documents cited by Prisua established that Prisua timely presented any argument to the Board regarding the "capturing" limitation, the court said. The court also concluded that substantial evidence supported the Board’s findings that Sitrick disclosed the claim’s "data entry device," and that Prisua waived any argument regarding the "operably coupled" aspect of the limitation. Concluding that all of the Board’s findings with respect to claim 11 were supported by the evidence, the court rejected Prisua’s appeal.

This case is No. 2019-1169, 2019-1260.

Attorneys: Richard L. Rainey (Covington & Burling LLP) for Samsung Electronics America, Inc. John C. Carey (Carey Rodriguez Greenberg & Paul LLP) for Prisua Engineering Corp.

Companies: Samsung Electronics America, Inc.; Prisua Engineering Corp.

MainStory: TopStory Patent FedCirNews

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