Case: 21-1960 Document: 61 Page: 1 Filed: 06/30/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PRISUA ENGINEERING CORP.,
Appellant
v.
SAMSUNG ELECTRONICS AMERICA, INC.,
Appellee
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2021-1960
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
01188.
______________________
Decided: June 30, 2023
______________________
JOHN C. CAREY, Carey Rodriguez Milian Gonya, LLP,
Miami, FL, argued for appellant. Also represented by
NICHOLAS J. DOYLE.
Case: 21-1960 Document: 61 Page: 2 Filed: 06/30/2023
2 PRISUA ENGINEERING CORP. v.
SAMSUNG ELECTRONICS AMERICA, INC.
RICHARD L. RAINEY, Covington & Burling LLP, Wash-
ington, DC, argued for appellee. Also represented by
BRADLEY KEITH ERVIN, ROBERT JASON FOWLER.
MARY L. KELLY, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for interve-
nor. Also represented by PETER J. AYERS, SARAH E.
CRAVEN, THOMAS W. KRAUSE, FARHEENA YASMEEN
RASHEED.
______________________
Before DYK, BRYSON, and STARK, Circuit Judges.
STARK, Circuit Judge.
Prisua Engineering Corp. (“Prisua”) appeals a decision
of the Patent Trial and Appeal Board (“Board”) concluding
that claims 1-4 and 8 of
U.S. Patent No. 8,650,591 (“’591
patent”) are unpatentable as obvious. Because substantial
evidence supports the Board’s findings, we affirm.
I
The ’591 patent, titled “Video Enabled Digital Devices
for Embedding User Data in Interactive Applications,”
teaches apparatuses and methods that enable substituting
a part of one video as a part of another video. For example,
the technology could allow a user to substitute her own face
for a character’s or actor’s face in a video game or movie.
Claims 1-4 and 8 of the ’591 patent are at issue on
appeal. Claim 1, an apparatus claim from which claims 2-
4 and 8 depend, is illustrative of the challenged claims and
recites:
An interactive media apparatus for generating a
displayable edited video data stream from an orig-
inal video data stream, wherein at least one pixel
in a frame of said original video data stream is dig-
itally extracted to form a first image, said first im-
age then replaced by a second image resulting from
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PRISUA ENGINEERING CORP. v. 3
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a digital extraction of at least one pixel in a frame
of a user input video data stream, said apparatus
comprising:
an image capture device capturing the user
input video data stream;
an image display device displaying the orig-
inal video stream;
a data entry device, operably coupled with
the image capture device and the image dis-
play device, operated by a user to select the
at least one pixel in the frame of the user in-
put video data stream to use as the second
image, and further operated by the user to
select the at least one pixel to use as the first
image;
wherein said data entry device is selected
from a group of devices consisting of: a key-
board, a display, a wireless communication
capability device, and an external memory
device;
a digital processing unit operably coupled
with the data entry device, said digital pro-
cessing unit performing:
identifying the selected at least one pixel in
the frame of the user input video data
stream;
extracting the identified at least one pixel
as the second image;
storing the second image in a memory de-
vice operably coupled with the interactive
media apparatus;
receiving a selection of the first image from
the original video data stream;
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4 PRISUA ENGINEERING CORP. v.
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extracting the first image;
spatially matching an area of the second
image to an area of the first image in the
original video data stream, wherein spa-
tially matching the areas results in equal
spatial lengths and widths between said
two spatially matched areas; and
performing a substitution of the spatially
matched first image with the spatially
matched second image to generate the dis-
playable edited video data stream from the
original video data stream.
’591 patent 7:14-54 (emphasis added). The two emphasized
limitations are referred to as the “image display device lim-
itation” and the “data entry device limitation” respectively.
Both are at issue in this appeal.
After Prisua sued Samsung Electronics America, Inc.
(“Samsung”) for infringing the ’591 patent, Samsung peti-
tioned the Board for inter partes review of claims 1-4, 8,
and 11. See Samsung Elecs. Am., Inc. v. Prisua Eng’g
Corp.,
948 F.3d 1342, 1349-50 (Fed. Cir. 2020) (explaining
initial procedural history of this case). Samsung’s grounds
for unpatentability were based on, as relevant here, Patent
Application Publication No. 2005/0151743 (“Sitrick”) and,
alternatively,
U.S. Patent No. 7,460,731 (“Senftner”). 1
1 Samsung’s grounds for obviousness for claims 3
and 4 relied on a combination of Sitrick, or alternatively,
Senftner, with a third prior art reference. Because the is-
sues presented in this appeal relate only to Sitrick and/or
Senftner, for simplicity we refer just to these two refer-
ences. Our discussion of the obviousness grounds based on
those two references applies equally to the combination
grounds with which Samsung challenges claims 3 and 4.
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Sitrick teaches “a system and method for processing a
video input signal providing for tracking a selected portion
in a predefined audiovisual presentation and integrating
selected user images into the selected portion of the prede-
fined audiovisual presentation.” J.A. 1970. Figure 1 of Sit-
rick is a “diagram of the [Sitrick] invention”:
J.A. 1971, 1980. As depicted in the figure, Sitrick teaches
incorporating “a user specified image” (137) from image
data (135) into an original video (120) to produce an output
video (190) in which the user specified image replaces a
portion of the original video (123). 2 J.A. 1980 (Sitrick ¶ 31).
Senftner similarly teaches processes and devices for “cre-
ating personalized videos through partial image replace-
ment.” J.A. 1953 (Senftner 1:36-37).
The Board instituted inter partes review and found
claim 11 obvious in light of Sitrick. The Board further de-
termined it could not assess the obviousness of claims 1-4
and 8 because they were indefinite under IPXL Holdings,
2 We follow the terminology of Sitrick and, when dis-
cussing the reference, refer to the original source and the
output as “videos” but refer to the replacement source as
an “image.” The parties do not suggest this difference is
material.
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6 PRISUA ENGINEERING CORP. v.
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L.L.C. v. Amazon.com, Inc.,
430 F.3d 1377 (Fed. Cir. 2005).
See Samsung, 948 F.3d at 1350. Both parties appealed.
On appeal, we affirmed the Board’s holding that claim
11 was invalid. Id. at 1355-59. 3 We further held that
IPXL-type indefiniteness does not preclude the Board from
addressing patentability on obviousness (or anticipation)
grounds. See id. at 1355. Accordingly, we remanded for
the Board to reconsider the validity of claims 1-4 and 8. On
remand, the Board found that claims 1-4 and 8 were un-
patentable as obvious over Sitrick and, alternatively, that
claims 1, 3-4, and 8 (but not claim 2) were unpatentable as
obvious over Senftner.
Prisua timely appealed. 4
II
A patent is obvious “if the differences between the sub-
ject 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 or-
dinary skill in the art.”
35 U.S.C. § 103(a) (2011). 5 “Obvi-
ousness is a legal question based on underlying findings of
fact.” Fleming v. Cirrus Design Corp.,
28 F.4th 1214, 1221
3 Claim 11, unlike the claims now before us, is a
method claim. Claim 11 also does not contain the image
display device limitation of the claims we are reviewing
now and has a variation of the data entry device limitation.
4 The Board had jurisdiction under
35 U.S.C.
§ 316(c). We have jurisdiction under
28 U.S.C.
§ 1295(a)(4)(A) and
35 U.S.C. §§ 141(c), 319.
5 The ’591 patent has an effective filing date of
March 9, 2010. Therefore, the version of § 103 that existed
prior to the enactment of the Leahy-Smith America Invents
Act governs. See
35 U.S.C. § 100 note.
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(Fed. Cir. 2022). Among those underlying issues of fact is
what the prior art reference discloses to an ordinarily
skilled artisan. See
id.
We review the Board’s legal determinations de novo
and its factual findings for substantial evidence. See Almi-
rall, LLC v. Amneal Pharms. LLC,
28 F.4th 265, 271 (Fed.
Cir. 2022). Substantial evidence is “such relevant evidence
as a reasonable mind might accept as adequate to support
a conclusion.” Consol. Edison Co. of N.Y. v. NLRB,
305
U.S. 197, 229 (1938). “[T]he possibility of drawing two in-
consistent conclusions from the evidence does not prevent
an administrative agency’s finding from being supported
by substantial evidence.” Consolo v. Fed. Mar. Comm’n,
383 U.S. 607, 620 (1966). Indeed, to the contrary, we have
described such a situation as “the epitome of a decision that
must be sustained upon review for substantial evidence.”
Elbit Sys. of Am., LLC v. Thales Visionix, Inc.,
881 F.3d
1354, 1356 (Fed. Cir. 2018) (internal quotation marks and
citation omitted). We “defer to the Board’s findings con-
cerning the credibility of expert witnesses.” Yorkey v. Diab,
601 F.3d 1279, 1284 (Fed. Cir. 2010).
III
Prisua identifies two purported errors in the Board’s
analysis of claim 1. 6 First, Prisua argues that neither Sit-
rick nor Senftner discloses the image display device limita-
tion. Second, Prisua contends that neither reference
discloses the data entry device limitation. We find sub-
stantial evidence supports the Board’s conclusion that Sit-
rick discloses both of these limitations. Therefore, we do
6 Prisua presses no separate arguments with respect
to dependent claims 2-4 and 8. Therefore, our analysis of
claim 1 applies equally to the other claims, and no other
issues need to be addressed.
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8 PRISUA ENGINEERING CORP. v.
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not reach the issue of whether these limitations are also
present in Senftner.
A
We start with the image display device limitation. Ac-
cording to Prisua, Sitrick does not suggest that the original
image is displayed on an image display device. In Prisua’s
view, Sitrick’s Figure 1 can only be reasonably understood
as representing an undisplayed data manipulation process;
it does not, Prisua asserts, depict a physical device. We
disagree, as the Board’s contrary finding is supported by
substantial evidence.
Samsung’s expert, Dr. Edward Delp, testified that a
person of ordinary skill in the art would understand Sit-
rick’s Figure 1 as including actual displays in its illustra-
tion. The Board was free to credit Dr. Delp over Prisua’s
expert, Dr. Yolanda Prieto (who is also the ’591 patent’s in-
ventor), and we have no basis to question its decision to do
so. See Yorkey,
601 F.3d at 1284. Sitrick explains that in
Figure 1 “representations of two people . . . are visible in
. . . program video 120,” i.e., in the original video stream.
J.A. 1980 (emphasis added). A reasonable mind – after
considering the competing experts’ testimony, choosing to
credit that of Dr. Delp, and evaluating the record from the
perspective of an ordinarily skilled artisan – could conclude
that if the contents of the original video stream are “visible”
in Figure 1 then the original video stream must be dis-
played and, therefore, Sitrick discloses “an image display
device displaying the original video stream.” Accordingly,
substantial evidence supports the Board’s findings with re-
spect to the image display device limitation.
B
We now turn to the data entry device limitation.
Prisua argues that this limitation requires “a specific kind
of data entry device: one that is . . . operated by the user to
select at least one pixel from the original video stream.”
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Prisua’s Br. 26, 29. Prisua further contends that the Board
erred because it found only that Sitrick discloses a data en-
try device in which the user selects at least one pixel from
the replacement image, not from the original video, and
this finding does not demonstrate obviousness. See
id. (cit-
ing J.A. 31-32). 7
We acknowledge that the Board’s analysis on this issue
consisted only of an explanation of why Sitrick discloses
user selection of at least one pixel from the replacement
image; it could have more clearly addressed whether Sit-
rick discloses the user selecting at least one pixel from the
original video stream. See J.A. 31-32. However, the
Board’s approach to this issue is the understandable con-
sequence of Prisua’s argumentation. Prisua argued to the
Board that “Sitrick does not disclose that a user operates
Sitrick’s computer to ‘select the at least one pixel.’” J.A.
836. Prisua did not argue to the Board that there was any
meaningful difference between the user selecting “at least
one pixel” in the original video and selecting “at least one
pixel” in the replacement image, and it never asserted to
the Board that Sitrick fails to teach the selection of at least
one pixel in the original video. Hence, when the Board ex-
plained that Sitrick discloses user selection of at least one
pixel from an image for use in the resulting video, it fully
resolved the dispute presented to it. Notwithstanding
Prisua’s belated arguments to us, which are presented with
7 Prisua additionally argues that because (in its
view) Sitrick does not teach the image display device it also
does not teach the data entry device limitation, as the data
entry device must be “operably coupled with . . . the image
display device.” Because we are affirming the Board’s con-
clusion that Sitrick discloses the image display device,
Prisua’s contention lacks merit.
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much greater specificity and clarity, the Board had no rea-
son to believe its findings as to Sitrick were incomplete.
In addition, any error by the Board in this regard is
harmless, as unappealed findings of the Board entail the
conclusion that Sitrick teaches the user selecting at least
one pixel from the original video. See In re Watts,
354 F.3d
1362, 1369 (Fed. Cir. 2004) (applying harmless error rule
to Board); Munoz v. Strahm Farms, Inc.,
69 F.3d 501, 504
(Fed. Cir. 1995) (“The correction of an error must yield a
different result in order for that error to have been harmful
and thus prejudice a substantial right of a party.”). The
Board explained that the system described in Sitrick “nec-
essarily receives [a] selection [from the original video] in
order to carry out the disclosed replacement.” J.A. 39. This
selection necessarily requires the user to choose at least
one pixel from the original video. See J.A. 1590 (Decl. Dr.
Edward Delp ¶ 103) (Dr. Delp testifying that skilled arti-
san “would necessarily have to select one or more pixels in
order to select an image or portion of an image”). As Sitrick
explains, “[i]t is a further object of the present invention to
provide various means for selecting . . . and substituting
portions of” the original video with what becomes the re-
placement video. J.A. 1979 (Sitrick ¶¶ 7, 13).
Finally, substantial evidence supports the Board’s ad-
ditional findings as to Sitrick’s disclosures that are rele-
vant to the data entry device limitation. Claim 1 of the ’591
patent states that the “data entry device is selected from a
group of devices consisting of: a keyboard” among other op-
tions. Sitrick represents that its invention can be imple-
mented on a “general purpose computer,” J.A. 1982-83,
1988, 1990-91 (Sitrick ¶¶ 41, 46, 95, 115, 118, 121), and
Prisua’s expert agreed that a “general purpose computer”
includes a data entry device like a keyboard, J.A. 2299
(Yolanda Prieto Dep.). Samsung’s expert, Dr. Delp, testi-
fied that a skilled artisan would “recognize that the data
entry device(s) connected to the general purpose computer
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would be operably connected to the image capture device
as well, which would enable user interaction with the im-
age capture device,” and that “the data entry device for the
general purpose computer would be used to interact with
the computer to select content for viewing on the display
device, as well as to interact with that content.” J.A. 1589-
90 (Decl. of Edward Delp ¶¶ 100-01). Indeed, Sitrick is un-
ambiguous that the substituted image is “user specified,”
suggesting (if not requiring) there exists a data entry sys-
tem to allow for that selection. J.A. 1980 (Sitrick ¶ 31).
Thus, we find substantial evidence supports the
Board’s finding that Sitrick teaches the data entry device
limitation of claim 1 of the ’591 patent.
IV
We have considered Prisua’s other arguments and find
them unpersuasive. For the reasons above, we affirm the
Board’s determination that claims 1-4 and 8 of the ’591 pa-
tent are unpatentable as obvious.
AFFIRMED
COSTS
Costs to Samsung.
