Samsung Electronics America v. Prisua Engineering Corp.

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United States Court of Appeals
for the Federal Circuit
______________________
SAMSUNG ELECTRONICS AMERICA, INC.,
Appellant
v.
PRISUA ENGINEERING CORP.,
Cross-Appellant
______________________
2019-1169, 2019-1260
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
01188.
______________________
Decided: February 4, 2020
______________________
RICHARD L. RAINEY, Covington & Burling LLP, Wash-
ington, DC, argued for appellant. Also represented by
KRISTIN COBB, ROBERT JASON FOWLER.
JOHN C. CAREY, Carey, Rodriguez, Greenberg & Paul,
LLP, Miami, FL, argued for cross-appellant.
______________________
Before PROST, Chief Judge, NEWMAN and BRYSON, Circuit
Judges.
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BRYSON, Circuit Judge.
Samsung Electronics America, Inc., appeals from a de-
cision of the Patent Trial and Appeal Board in an inter
partes review proceeding. Samsung petitioned the Board
to rule that certain claims of U.S. Patent No. 8,650,591
(“the ’591 patent”), owned by cross-appellant Prisua Engi-
neering Corp. (“Prisua”), were unpatentable. At the con-
clusion of the proceeding, the Board held that claim 11 of
the ’591 patent was unpatentable based on obviousness.
However, the Board declined to analyze whether claims 1–
4 and 8 were unpatentable as anticipated or obvious, be-
cause it concluded that those claims were indefinite.
On appeal, Samsung contends that the Board should
have canceled claims 1–4 and 8 for indefiniteness. In the
alternative, Samsung argues that even if the Board was
not statutorily authorized to cancel those claims for indefi-
niteness, it should have assessed whether they would have
been anticipated or obvious in view of the cited prior art.
Prisua cross-appeals from the Board’s ruling that claim 11
was unpatentable for obviousness. We affirm in part, re-
verse in part, and remand.
I
A
Congress has long permitted parties accused of patent
infringement in federal court to challenge the validity of
the asserted patent claims on any ground specified in part
II of the Patent Act as a condition for patentability and for
failure to comply with any requirement of 35 U.S.C. § 112.
See 35 U.S.C. § 282(b)(2)–(3). Over the last few decades,
Congress has supplemented federal court litigation by cre-
ating several administrative processes that authorize the
Patent and Trademark Office (“PTO”) to reconsider and
cancel wrongly issued claims in some circumstances.
In 1980, Congress established a regime known as “ex
parte reexamination.” See Act to Amend the Patent and
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Trademark Laws, Pub. L. No. 96-517, 94 Stat. 3015 (1980),
codified at 35 U.S.C. § 301 et seq. Ex parte reexamination
gives “[a]ny person at any time” the right to “file a request
for reexamination” based on certain prior art “bearing on
the patentability” of an already-issued patent. 35 U.S.C.
§§ 301(a)(1), 302. After institution, an ex parte reexamina-
tion follows essentially the same back and forth process be-
tween the patent owner and the examiner as in the initial
PTO examination. 35 U.S.C. § 305.
Congress subsequently created a procedure known as
“inter partes reexamination.” See Optional Inter Partes
Reexamination Procedure Act of 1999, Pub. L. No. 106-113,
113 Stat. 1501A-567, codified at 35 U.S.C. § 311 et seq.
(2006 ed.) (superseded). Inter partes reexamination gave
third parties greater opportunities to participate in the
reexamination process, but otherwise proceeded much like
an ex parte reexamination.
The Leahy-Smith America Invents Act (“AIA”), Pub. L.
No. 112-29, 125 Stat. 284 (2011), replaced inter partes
reexamination with “inter partes review,” the procedure at
issue in this case. See 35 U.S.C. §§ 311–19. Inter partes
review, commonly referred to as IPR, provides patent chal-
lengers with even broader rights to participate in the pro-
cess of re-evaluating patents, but it also sets limits on the
process. A petition for inter partes review, for example, can
request cancellation of claims “only on a ground that could
be raised under section 102 or 103 [of the Patent Act] and
only on the basis of prior art consisting of patents or
printed publications.” 35 U.S.C. § 311(b).
The AIA also created another administrative process
called “post-grant review.” See 35 U.S.C. §§ 321–29. Un-
like a petition for inter partes review, a petition for post-
grant review can request cancellation of patent claims “on
any ground that could be raised under paragraph (2) or (3)
of section 282(b) [of the Patent Act] (relating to invalidity
of the patent or any claim),” the same invalidity defenses
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long available to defendants accused of patent infringe-
ment in federal district court. 35 U.S.C. § 321(b).
Although a petition for inter partes review is limited to
a narrow set of grounds, it can be requested at any time
during a patent’s enforceability period, with certain re-
strictions. 35 U.S.C. §§ 311(c), 315(b). By contrast, the
broad range of grounds that may be raised in a post-grant
review petition are available only for a limited time after
the patent is issued. 35 U.S.C. § 321(c).
B
In 2010, Dr. Yolanda Prieto applied for a patent aimed
at providing a “new and unique form of enhancing” a user’s
multimedia entertainment experience. ’591 patent, Ab-
stract. The PTO granted the application in 2014. The is-
sued patent, entitled “Video Enabled Digital Devices for
Embedding User Data in Interactive Applications,” is di-
rected 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 ob-
ject.” ’591 patent, col. 1, ll. 43–47. Figure 3 illustrates the
operation of the video image substitution according to one
embodiment:
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As illustrated, a user can insert a selected image, such as
a face of the user’s choosing, in place of the face of the figure
in the original video. Id. at col. 3, line 66, through col. 4,
line 2.
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Claims 1–4, 8, and 11 of the ’591 patent are at issue in
this appeal. The claims are directed to methods and appa-
ratuses for “generating a displayable edited video data
stream from an original video data stream.” ’591 patent,
col. 7, ll. 14–16; id. at col. 8, ll. 28–29. Independent claim
1 reads in full as follows:
1. An interactive media apparatus for generat-
ing a displayable edited video data stream from an
original video data stream, wherein at least one
pixel in a frame of said original video data stream
is digitally extracted to form a first image, said first
image then replaced by a second image resulting
from a digital extraction of at least one pixel in a
frame of a user input video data stream, said appa-
ratus comprising:
an image capture device capturing the user input
video data stream;
an image display device displaying the original
video stream;
a data entry device, operably coupled with the im-
age capture device and the image display device,
operated by a user to select the at least one pixel in
the frame of the user input 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 keyboard, a dis-
play, a wireless communication capability device,
and an external memory device;
a digital processing unit operably coupled with the
data entry device, said digital processing unit per-
forming:
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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 device oper-
ably coupled with the interactive media apparatus;
receiving a selection of the first image from the
original video data stream;
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 spatially matching the areas re-
sults 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 im-
age to generate the displayable edited video data
stream from the original video data stream.
’591 patent, cl. 1. Claims 2–4 and 8 depend from claim 1
and add several limitations that are not pertinent to the
resolution of this appeal. Independent claim 11 is a method
claim that tracks the limitations of apparatus claim 1, with
some minor differences. In particular, claim 11 does not
have a limitation corresponding to claim 1’s requirement of
“an image display device displaying the original video
stream.” Id. On the other hand, claim 11 adds limitations
that require the computation of “motion vectors associated
with the first image” and the application of those motion
vectors “to the second image, wherein the generated dis-
playable edited video data stream resulting from the sub-
stitution maintains an overall motion of the original video
data stream.” Id.
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C
After the ’591 patent issued, Dr. Prieto formed Prisua
to commercialize the invention claimed in the patent. In
2016, Prisua sued Samsung Electronics America, Inc., and
several other Samsung entities for patent infringement.
Prisua alleged that the “Best Face” feature on several Sam-
sung devices, including cell phones, infringed claims 1, 3,
4, and 8 of the ’591 patent. The “Best Face” feature, ac-
cording to Prisua, 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. 1
After being sued, Samsung petitioned for inter partes
review of claims 1–4, 8, and 11 of the ’591 patent on four
separate grounds. The Board initially determined that it
would review only whether a U.S. patent application pub-
lication known as 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 deter-
mine the scope of those claims.
The Board concluded that there were two impediments
to determining the scope of claim 1. First, the Board found
that 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 de-
vice to select the at least one pixel.” Samsung Elecs. Am.,
Inc. v. Prisua Eng’g Corp., No. IPR2017-01188, 2017 WL
1 After a trial in the United States District Court for
the Southern District of Florida, the jury found that Sam-
sung willfully infringed the asserted claims and awarded
Prisua $4.3 million in damages. That action has been
stayed pending this proceeding; the verdict in that case is
not at issue in this appeal.
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4570373, at *5 (P.T.A.B. Oct. 11, 2017) (“Institution Deci-
sion”) (emphasis in original). For that reason, the Board
concluded that claim 1 was indefinite under this court’s de-
cision in IPXL Holdings, LLC v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005). Institution Decision, 2017
WL 4570373, at *5-6. The Board also concluded that the
“digital processing unit” limitation in claim 1 “invoke[d]
§ 112, sixth paragraph” and that the petition failed to iden-
tify any corresponding structure, as required by section 112
and the pertinent PTO regulation, 37 C.F.R. § 42.104(b)(3).
Institution Decision, 2017 WL 4570373 at *6 (citing Wil-
liamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed.
Cir. 2015) (en banc)). The Board found that claims 2–4 and
8, which depend 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 con-
cluded that the petitioner had not “established a reasona-
ble likelihood of prevailing in showing that claims 1–4, and
8 are unpatentable under any of the asserted grounds.” Id.
As the IPR briefing was drawing to a close, the Su-
preme Court decided SAS Institute, Inc. v. Iancu, 138 S. Ct.
1348 (2018), in which the Court held that when the Board
institutes an IPR, it may not pick and choose which claims
it will address, but must address the patentability of every
claim challenged by the petitioner. Accordingly, the Board
modified its institution decision to include all the chal-
lenged claims and all the grounds presented in the petition.
The Board also allowed the parties to file supplemental
briefs and evidence, but only to address the newly added
claims and grounds.
In its supplemental briefing, Prisua stated that it did
not agree with the Board’s indefiniteness determinations.
Despite that, Prisua argued that because Samsung had
failed to prove the claims were definite, the Board should
not apply the prior art to the claims. Prisua also contended
that the Board did not have the statutory authority to can-
cel claims for indefiniteness during an IPR.
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In response, Samsung urged the Board to cancel claims
1–4 and 8 based on the Board’s determination that those
claims were indefinite under this court’s analysis in IPXL.
In the alternative, Samsung argued that even if the Board
could not cancel the claims for indefiniteness, it could still
apply the prior art to the claims despite the IPXL issue. In
support of that contention, Samsung argued that because
the uncertainty regarding claim scope resulted from the
combination of two statutory classes of invention, a manu-
facturer or seller of the claimed device would not know
when infringement occurred. But that, according to Sam-
sung, would not pose an obstacle to determining whether
those claims could be measured against the prior art. Sam-
sung also argued that the term “digital processing unit”
constituted a sufficient recitation of structure and did not
invoke means-plus-function analysis under 35 U.S.C. § 112
¶ 6.
In its final written decision, the Board repeated its con-
clusion that claims 1–4 and 8 were indefinite under IPXL.
Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., No.
IPR2017-01188, 2018 WL 5274000, at *7–8 (P.T.A.B. Oct.
2, 2018) (“Final Written Decision”). In addition, the Board
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. Id. at *9. The Board therefore held
that Samsung had not established that claims 1–4 and 8
were unpatentable under any of the asserted grounds. Id.
With respect to claim 11, the Board analyzed whether
that claim would have been obvious in view of Sitrick, the
sole originally instituted ground of review. After reviewing
various record materials, including competing expert testi-
mony, the Board found that all of the limitations of claim
11 would have been obvious in light of Sitrick, including
the “digital processing unit” limitation. Id. at *11-19. The
Board therefore held claim 11 to be unpatentable.
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II
On appeal, Samsung challenges the Board’s decision
not to cancel the claims it found indefinite. In the alterna-
tive, Samsung contends that the Board should have ap-
plied the cited prior art to those claims.
A
We reject Samsung’s contention that the IPR statute
authorizes the Board to cancel challenged claims for indef-
initeness. In Cuozzo Speed Techs., LLC v. Lee, the Su-
preme Court said the Patent Office would be acting
“outside its statutory limits” by “canceling a patent claim
for ‘indefiniteness under § 112’ in inter partes review.” 136
S. Ct. 2131, 2141–42 (2016). This court subsequently ech-
oed that view, stating—albeit in a non-precedential opin-
ion—that “[i]n an IPR, the Board cannot declare claims
indefinite.” Google LLC v. Network-1 Techs., Inc., 726 F.
App’x 779, 782 n.3 (Fed. Cir. 2018) (citing 35 U.S.C.
§ 311(b)); see also Neptune Generics, LLC v. Eli Lilly & Co.,
921 F.3d 1372, 1378 (Fed Cir. 2019) (holding that the Board
is not authorized to address challenges to patent eligibility
under 35 U.S.C. §101 in an IPR proceeding: “Congress ex-
pressly limited the scope of inter parties review to a subset
of grounds that can be raised under 35 U.S.C. §§ 102 &
103.”).
Samsung asks us to reject those statements as dicta
and to hold that even though the Board may not institute
inter partes review based on a claim’s indefiniteness, it
may cancel such a claim on indefiniteness grounds once it
has instituted review on statutorily authorized grounds.
We are not persuaded by Samsung’s arguments; we hold
that the Board may not cancel claims for indefiniteness in
an IPR proceeding.
The statutory provisions governing the inter partes re-
view process do not permit the Board to institute inter
partes review of claims for indefiniteness. Section 311(b),
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entitled “Scope,” states that “[a] petitioner in an inter
partes review may request to cancel as unpatentable 1 or
more claims of a patent only on a ground that could be
raised under section 102 or 103 and only on the basis of
prior art consisting of patents or printed publications.” 35
U.S.C. § 311(b). Samsung, the petitioner in the IPR pro-
ceeding below, was thus not permitted to request that the
Board cancel claims 1–4 and 8 on the ground that they were
indefinite.
Nor could the Board cancel those claims as indefinite
on its own accord. As the Supreme Court explained in SAS,
Congress “chose to structure a process in which it’s the pe-
titioner, not the Director, who gets to define the contours”
of an IPR proceeding. 138 S. Ct. at 1355. “[T]he statute
envisions that a petitioner will seek an inter partes review
of a particular kind—one guided by a petition describing
‘each claim challenged’ and ‘the grounds on which the chal-
lenge to each claim is based.’” Id. (quoting 35 U.S.C.
§ 312(a)(3)). After analyzing the IPR statute and its prede-
cessors, the Supreme Court concluded that it was clear that
“the petitioner’s contentions, not the Director’s discretion,
define the scope of the litigation all the way from institu-
tion through to conclusion.” Id. at 1357. The petition, that
is, defines the scope of an IPR proceeding, and nothing in
the IPR statute permits the Board to expand that scope in
its final written decision.
1
Notwithstanding the foregoing authority, Samsung
points to several provisions in the IPR statute in an effort
to show that Congress authorized the Board to cancel
claims for indefiniteness after an IPR has been instituted.
None of those provisions, however, supports Samsung’s ar-
gument.
First, while section 311(b) limits the scope of an IPR
petition to certain grounds that could be raised under sec-
tions 102 and 103, Samsung argues that section 318(a),
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which relates to the Board’s final written decision, is not so
limited. Section 318(a) directs the Board to “issue a final
written decision with respect to the patentability of any pa-
tent claim challenged by the petitioner and any new claim
added under section 316(d).” 35 U.S.C. § 318(a). Samsung
contends that the word “patentability” in section 318(a) is
broader than the phrase “a ground that could be raised un-
der section 102 or 103” in section 311(b). The difference,
according to Samsung, indicates that the permissible scope
of the Board’s final written decision is broader than the
permissible scope of the petition and the institution deci-
sion.
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. Section 311(b) says
that a petitioner may ask the Board “to cancel [challenged
claims] as unpatentable” on certain 102 and 103 grounds.
In context, it is clear that section 318(a)’s directive to the
Board to issue a final written decision on the “patentabil-
ity” of a challenged claim refers back to the grounds on
which, under section 311(b), the petitioner may request the
Board to “cancel as unpatentable” claims of the challenged
patent, i.e., the designated section 102 and 103 grounds. 2
Second, Samsung notes that the word “patentability”
in section 318(a) modifies both “challenged” claims and
“new” claims that are proposed during the inter partes pro-
ceeding. For that reason, Samsung suggests, the scope of
the Board’s review must be the same for both. And because
2 The Director’s certificate under section 318(b) “con-
firming any claim of the patent determined to be patenta-
ble” does not indicate that the Board has analyzed and
confirmed the patentability of the subject claims against
any possible ground of invalidity, as Samsung suggests.
The certificate is merely a reflection of the analysis that
the Board performed in response to the petition.
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it is undisputed that the Board may review newly added
claims for compliance with section 112, Samsung argues
that the Board must likewise be authorized to review chal-
lenged claims for unpatentability on section 112 grounds,
including indefiniteness.
That argument overlooks the distinction the inter
partes review statute draws between challenged claims
and new claims that are added in the IPR proceeding. Sec-
tion 316(d) allows patent owners to move to amend a patent
during an IPR proceeding by substituting new or amended
claims. Unlike section 311(b), section 316(d) does not limit
the grounds for considering the unpatentability of those
new claims under provisions other than sections 102 and
103.
Because the Board is charged with the responsibility
under section 318(b) of “incorporating in the patent by op-
eration of the certificate any new or amended claim deter-
mined to be patentable,” the Board’s authority with respect
to new and amended claims necessarily extends to other
possible grounds of unpatentability, in particular, a failure
to comply with section 112. Because the statutory provi-
sions governing challenged claims in an IPR differ im-
portantly from those governing substitute claims, the term
“unpatentability” necessarily has a different scope as to
each.
Samsung next points to the post-grant review statute
to support its argument that claims can be cancelled as in-
definite at the conclusion of an IPR proceeding. Unlike a
petition for inter partes review, a petition for post-grant re-
view may be based on “any ground that could be raised un-
der paragraph (2) or (3) of section 282(b) (relating to
invalidity of the patent or any claim).” 35 U.S.C. § 321.
Despite the difference in scope regarding what may be re-
quested in post-grant review as opposed to inter partes re-
view, the final written decision provision of the post-grant
review statute mirrors the final written decision provision
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of the inter partes review statute. See 35 U.S.C. § 328
(“[T]he Patent Trial and Appeal Board shall issue a final
written decision with respect to the patentability of any pa-
tent claim challenged by the petitioner and any new claim
added under section 326(d).”) (emphasis added). Because
there can be no dispute that review of “patentability” in the
post-grant review statute encompasses indefiniteness,
Samsung contends that when Congress used the same
word in the inter partes review statute, it must have meant
to authorize the Board to consider grounds of unpatenta-
bility other than those raised in the petition, such as indef-
initeness.
To the contrary, the term “patentability” takes its
meaning in each of the two statutory provisions from its
particular context. Congress laid out the scope of inter
partes review in section 311(b), at the beginning of Chapter
31 of Title 35. It laid out the scope of post-grant review in
section 321(b), at the beginning of Chapter 32. Congress’s
use of the word “patentability” in the final written decision
provision of each chapter—in sections 318(a) and 328(a),
respectively—most naturally refers to the previously de-
fined scope of the particular review in question. Patenta-
bility for purposes of section 318(a) thus refers to the
limited grounds of unpatentability described in section
311(b), and patentability for purposes of section 328(a) re-
fers to the broader grounds of unpatentability described in
section 321(b).
2
We also do not agree with Samsung’s contention that
the Board’s inherent authority to perform claim construc-
tion during an inter partes review means that the Board
can cancel the claims as indefinite. Although “indefinite-
ness analysis involves general claim construction princi-
ples,” Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d
1370, 1378 (Fed. Cir. 2017), it does not follow that the
Board may exceed its statutorily limited authority simply
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because an indefiniteness issue arises during claim con-
struction. Instead, as discussed above, Congress viewed a
challenge based on indefiniteness to be distinct from a chal-
lenge based on sections 102 and 103. As such, the proper
course for the Board to follow, if it cannot ascertain the
scope of a claim with reasonable certainty for purposes of
assessing patentability, is to decline to institute the IPR or,
if the indefiniteness issue affects only certain claims, to
conclude that it could not reach a decision on the merits
with respect to whether petitioner had established the un-
patentability of those claims under sections 102 or103. 3 It
would not be proper for the Board to cancel claims on a
ground that is unavailable in an IPR.
3
In essence, Samsung’s argument is that there is no
limit to the Board’s authority to make unpatentability de-
terminations at the conclusion of an IPR proceeding. That
position is at odds with both the statutory language and
the case law, and we reject it.
B
Having rejected Samsung’s argument that the Board
may cancel challenged claims for indefiniteness during an
IPR, we next address Samsung’s secondary argument that
the Board should have assessed the patentability of claims
1 and 4–8 under sections 102 or 103.
As noted, even though neither party raised the issue of
indefiniteness below, the Board raised two indefiniteness
3 To be clear, in cases in which the Board cannot
reach a final decision as to the patentability of certain
claims because it cannot ascertain the scope of those claims
with reasonable certainty, the petitioner would not be es-
topped by 35 U.S.C. § 315(e) from challenging those claims
under sections 102 or 103 in other proceedings.
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concerns sua sponte. First, the Board concluded that claim
1 was indefinite under IPXL, because the claim recited
both an apparatus and a method of using that apparatus.
Final Written Decision, 2018 WL 5274000 at *6. Second,
the Board concluded that the “digital processing unit” lim-
itation of claim 1 invoked “means-plus-function” claiming
under 35 U.S.C. § 112, ¶ 6, and that because Samsung did
not identify any corresponding structure in the specifica-
tion, the Board could not apply the prior art to claim 1 or
its dependent claims. Id. Samsung contends that the
Board’s analysis of the “digital processing unit” limitation
was incorrect and that the IPXL issue did not prevent the
Board from assessing the patentability of claims 1 and 4–8
under sections 102 or 103.
1
We agree with Samsung that the term “digital pro-
cessing unit” is not a “means-plus-function” limitation sub-
ject to analysis under section 112, paragraph 6. Because
the reference to the digital processing unit does not contain
the words “means for,” there is a rebuttable presumption
that section 112, paragraph 6, does not apply to that limi-
tation. Williamson, 792 F.3d at 1348. That presumption
can be overcome, but only “if the challenger demonstrates
that the claim term fails to ‘recite sufficiently definite
structure’ or else recites ‘function without reciting suffi-
cient structure for performing that function.’” Id. at 1349.
The question whether the term “digital processing
unit” invokes section 112, paragraph 6, depends on
whether persons skilled in the art would understand the
claim language to refer to structure, assessed in light of the
presumption that flows from the drafter’s choice not to em-
ploy the word “means.” The Board pointed to no evidence
that a person skilled in the relevant art would regard the
term “digital processing unit” as purely functional. In fact,
Prisua argued to the Board, based on testimony from its
expert (the inventor), that the digital processing unit
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recited in the claims is “an image processing device that
people in the art are generally familiar with.” J.A. 896.
As used in the claims of the ’591 patent, the term “dig-
ital processing unit” clearly serves as a stand-in for a “gen-
eral purpose computer” or a “central processing unit,” each
of which would be understood as a reference to structure in
this case, not simply any device that can perform a partic-
ular function. See, e.g., LG Elecs., Inc. v. Bizcom Elecs.,
Inc., 453 F.3d 1364, 1372 (Fed. Cir. 2006), rev’d on other
grounds, Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S.
617 (2008); Inventio AG v. ThyssenKrupp Elevator Ams.
Corp., 649 F.3d 1350, 1359 (Fed. Cir. 2011).
Significantly, that is what the Board found with re-
spect to the use of the term “digital processing unit” in
claim 11. Final Written Decision, 2018 WL 5274000, at *14
(“As a result, we are not persuaded by Patent Owner’s con-
tention that ‘digital processing unit’ has a narrower defini-
tion than CPU. Sitrick discloses a general purpose
computer with a CPU that is capable of performing all of
the functions recited in claim 11. As a result, we are per-
suaded that Sitrick’s CPU teaches the recited ‘digital pro-
cessing unit.’”). Moreover, claim 1 requires that the
“digital processing unit” be operably connected to a “data
entry device” such as a keyboard, which in turn is con-
nected to other components. That portion of claim 1 con-
stitutes further evidence of the structural nature of the
term “digital processing unit,” as used in the claim.
The Board did not treat claim 11’s “digital processing
unit” as simply a black box recitation of any structure ca-
pable of providing certain functions. Instead, the Board
equated the term to a class of known structures—central
processing units—that could be found in any general-pur-
pose computer. See Final Written Decision, 2018 WL
5274000, at *14. The Board’s treatment of the “digital pro-
cessing unit” limitation in claim 11 as structural in nature
undermines its conclusion that the same term in claim 1
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was functional and thus subject to analysis under section
112, paragraph 6.
Given the Board’s findings with respect to claim 11, the
context of the term in the claim at issue, and the presump-
tion arising from the patentee’s failure to use the “means
for” formulation, unrebutted by any evidence before the
Board, we conclude that the Board erred in ruling that the
term “digital processing unit” does not recite structure and
instead is a purely functional term. We therefore reject 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 ana-
lyzed for anticipation or obviousness. 4
2
The Board also concluded that claim 1 was indefinite
because of an IPXL issue—a finding that neither party dis-
putes. However, the Board did not address Samsung’s ar-
gument that the Board could nonetheless apply the prior
art to claim 1 and its dependent claims for purposes of an-
ticipation or obviousness analysis. In light of our decision
to reverse the Board’s decision as to the “digital processing
unit” term, we believe the Board ended its analysis with
respect to the IPXL issue prematurely. We therefore re-
mand for further consideration of that issue.
4 Pointing to the Board’s reference to 37 C.F.R.
§ 42.104(b)(3), Prisua argues that Samsung’s petition
failed to present a proper claim construction for claim 1,
and that the Board’s decision is supportable on that
ground. The Board, however, referred to the regulation
only “if one were to contend that claim 1 is an apparatus
claim whose limitations are merely written in functional
language.” Final Written Decision, 2018 WL 5274000, at
*9. Samsung has not made such a contention, and we have
rejected it.
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On remand, the Board should address Samsung’s argu-
ment that the Board may analyze the patentability of a
claim even if that claim is indefinite under the reasoning
of IPXL. The rationale of IPXL is that the claim conflates
elements of both an apparatus and a method, rendering the
claim indefinite for purposes of determining when infringe-
ment occurs. But that merely says that the claim is subject
to invalidation on the ground of indefiniteness. It does not
speak to whether the claim is also invalid for obviousness,
regardless of whether it is treated as being directed to an
apparatus or a method.
Even though the validity of the challenged claims may
be subject to question for IPXL-type indefiniteness, that is
simply another ground on which the claims might be chal-
lenged in an appropriate forum (other than the Board). See
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 453–
55 (Fed. Cir. 1985) (upholding decision that patent was in-
valid for both indefiniteness and obviousness); In re Collier,
397 F.2d 1003, 1004–06 (CCPA 1968) (rejecting claim on
grounds of indefiniteness and obviousness). It does not
necessarily preclude the Board from addressing the patent-
ability of the claims on section 102 and 103 grounds. In the
remand proceedings, the Board should determine whether
claim 1 and its dependent claims are unpatentable as an-
ticipated or obvious based on the instituted grounds. 5
5 The Board has previously held that IPXL-type in-
definiteness does not prevent the Board from addressing
patentability. See Vibrant Media, Inc. v. Gen. Elec. Co., No.
IPR2013-00172, 2014 WL 3749773 (P.T.A.B. July 28,
2014), aff’d, 626 F. App’x 1010 (Fed. Cir. 2015). Although
the Board in this case suggested that its decision in Vibrant
Media might be inconsistent with this court’s decision in
Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332
(Fed. Cir. 2010), the statement in the Enzo case quoted by
the Board—that “a claim cannot be both indefinite and
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III
In its cross-appeal, Prisua challenges the Board’s order
holding claim 11 of the ’591 patent invalid for obviousness
over the Sitrick prior art reference. We affirm the Board’s
order with respect to that claim.
A
Prisua contends that Sitrick did not disclose the “cap-
turing a user input video data stream” limitation, and that
the Board ignored Prisua’s argument with respect to that
limitation. Samsung responds that Prisua did not properly
raise that issue before the Board, and we agree. None of
the documents Prisua cites establish that Prisua timely
presented any argument to the Board regarding the “cap-
turing” limitation.
The documents Prisua points to as evidence that it pre-
sented an argument regarding that limitation to the Board
consist mainly of material submitted during the supple-
mental briefing. When the Board, in response to the Su-
preme Court’s decision in SAS, modified its original
institution decision to include all the claims and grounds
raised in the petition, the Board authorized the parties to
file supplemental briefs. The Board ordered that those
briefs address only the newly added claims and grounds,
not any issues that were already under review. Because
the issue of the obviousness of claim 11 in view of Sitrick
was part of the original institution decision, Prisua’s
anticipated”—did not involve IPXL-type indefiniteness and
therefore did not resolve the question presented to the
Board in this case. Our decision here is limited to IPXL-
type indefiniteness and does not affect claims that are in-
definite for other reasons. Moreover, our ruling in this case
does not affect the disposition of cases in forums that are
authorized to consider indefiniteness as a basis for invali-
dating a claim.
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supplemental briefing did not pertain to that issue. The
supplemental briefing thus did not bear on the issues in
Prisua’s cross-appeal, which involves only the obviousness
of claim 11 in view of Sitrick. 6
B
Prisua next argues that Sitrick does not disclose a
“data entry device,” as recited in claim 11, and that the
Board failed to analyze whether the alleged data entry de-
vice of Sitrick is “operably coupled with the digital video
capture device,” as claim 11 requires. We conclude that
substantial evidence supports the Board’s findings that
Sitrick disclosed the “data entry device,” and that Prisua
waived any argument regarding the “operably coupled” as-
pect of the limitation.
With respect to the “data entry device” limitation, the
Board found that “a person of ordinary skill in the art
would have understood Sitrick’s disclosure of a ‘general
purpose computer’ to include a keyboard,” and that in any
event it was not necessary for Samsung to establish that
the general purpose computer disclosed in Sitrick neces-
sarily has a keyboard. Final Written Decision, 2018 WL
5274000, at *13.
Prisua contends that Sitrick does not inherently dis-
close a keyboard, but Samsung did not argue to the con-
trary. Instead, Samsung argued only that Sitrick’s general
purpose computer would necessarily include some type of
data entry device, a keyboard being one example. After
6 Prisua made a cursory reference to the “capturing
a user input video data stream” limitation in the back-
ground section of its patent owner response, but did not
discuss that limitation in its nonobviousness argument.
The Board was therefore correct in stating that Prisua did
not argue that limitation.
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considering extensive record materials besides the Sitrick
reference, including deposition testimony and competing
expert declarations, the Board agreed with Samsung that
Sitrick taught a data entry device.
That conclusion was supported by substantial evi-
dence. In particular, it was reasonable for the Board to
conclude that Prisua’s expert, Dr. Prieto, conceded in dep-
osition that the general-purpose computer disclosed in Sit-
rick would have a data entry device such as a keyboard.
Although Dr. Prieto went on to explain that other special
purpose hardware and software combinations disclosed in
Sitrick might not always include a data entry device, that
does not undermine the Board’s conclusion that the dis-
closed general-purpose computer would include a data en-
try device. We see no reason to disturb the Board’s
evaluation and weighing of the evidence on that score.
We also do not believe the Board improperly skipped
over the “operably coupled” aspect of the “using a data en-
try device” limitation, as Prisua suggests. In its prelimi-
nary patent owner response, prior to the institution of the
IPR, Prisua argued that a video camera can serve as the
source of image data, but need not be “operably coupled” to
a general purpose computer to do so. However, after the
Board rejected Prisua’s argument in its institution deci-
sion, Prisua focused on the absence of a “data entry device”
in Sitrick and did not address the “operably coupled” por-
tion of that limitation. It was therefore reasonable for the
Board to conclude that Prisua was no longer pressing any
argument based on the “operably coupled” language, and
to focus only on the arguments Prisua was continuing to
make.
C
Prisua next argues that Sitrick does not teach or sug-
gest the claimed step of “spatially matching an area of the
second image to an area of the first image in the original
video data stream, wherein spatially matching the areas
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results in equal lengths and widths between said two spa-
tially matched areas.” That step would, for example, re-
quire a user replacing an actor’s face with the user’s own to
make sure the image of the user’s face was modified so that
it matched the length and width of the image it was replac-
ing. The Board found that Sitrick taught the use of image
transformation techniques that met the “spatially match-
ing” limitation recited in claim 11. The Board’s finding on
that issue was supported by substantial evidence.
Prisua contends that although Sitrick discloses several
image transformation techniques, none of them requires
that the original and matched areas be of equal lengths and
widths. Instead, Prisua says that one of the available tech-
niques is chosen to “obtain the best” results, which is not
the same as achieving “equal lengths and widths” for the
original and matched areas. In the Sitrick reference, ac-
cording to Prisua, achieving “equal lengths and widths” is
merely a possibility, and thus that limitation is not dis-
closed sufficiently to establish obviousness.
In making its findings, the Board weighed both experts’
testimony regarding the “equal lengths and widths” limita-
tion, and chose to credit Samsung’s expert’s testimony that
the “morphing” technique disclosed in Sitrick involves an
“exact one to one relationship between the first array of co-
ordinates and the second array of coordinates—to align the
points of the first image into the points of the second image,
which would result in equal length and width.” Final Writ-
ten Decision, 2018 WL 5274000, at *17 (internal quotations
omitted). That assessment, the Board found, was enough
to establish that Sitrick discloses the “equal lengths and
widths” limitation. Prisua does not provide a convincing
response to that evidence, and we see no reason to disturb
the Board’s conclusion based on that evidence.
In an attempt to avoid that natural reading of Sitrick,
Prisua contends that Sitrick specifically excludes the
morphing technique, and that the Board therefore should
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not have relied on the testimony of Samsung’s expert. We
disagree. Although Sitrick discloses other transformation
techniques that, unlike morphing, may not necessarily
have resulted in equal lengths and widths, Sitrick undeni-
ably discloses using morphing as one option. And the
Board reasonably concluded that the morphing technique
results in equal lengths and widths, thus satisfying the
limitation at issue.
D
Prisua next contends that Sitrick does not teach or sug-
gest the claimed requirements of selecting, identifying, and
extracting at least one pixel from the user input video data
stream to be used as the second image. In the claim, a spa-
tially matched second image is what ultimately replaces
the first image in the original video stream.
Prisua complains that the second image in Sitrick is
modified before it is inserted in the substitution step,
whereas the claim, according to Prisua, does not allow the
second image to be modified before being inserted in the
substitution step. We do not see how Prisua’s argument
has any bearing on the claimed requirements of selecting,
identifying, and extracting at least one pixel from the user
input video data stream.
The Board agreed with Samsung’s argument that a
user operating the Sitrick system would have to select at
least one pixel in the user input video data stream in order
for the system to analyze the user selected image. 7 It is
clear from Sitrick that the selection, identification, and ex-
traction of at least one pixel in the disclosed system occurs
before any alleged modification, and those steps are thus
unaffected by whether there is a subsequent modification.
7 Contrary to Prisua’s contention, Samsung’s argu-
ment was not based on inherency, but merely recognized
that the image to be analyzed consists of one or more pixels.
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Moreover, even if the inputs in the substitution step are
modifications of the second image, that is consistent with
the language of claim 11, which requires that the second
image be “spatially matched” with the first image. Claim
11’s “spatially matching” requirement specifically contem-
plates modifying the second image so that it will have equal
lengths and widths as the first image it is replacing.
Prisua also contends that the Board misunderstood the
pertinent language of claim 11. In its final written deci-
sion, the Board stated, with respect to Sitrick, that “even
assuming that user-specified image 137 is a texture map
by the time it is an input 570 into subsystem 500, that is
not sufficient to show that an image was not originally se-
lected, as the claim [of the ’591 patent] requires.” Final
Written Decision, 2018 WL 5274000, at *13 (emphasis
added). Prisua argues that the emphasized language indi-
cates that the Board misunderstood claim 11, because the
claim recites that “at least one pixel” is selected, not that
“an image” is selected. The Board, however, had previously
credited Samsung’s explanation that Sitrick’s “user se-
lected image” required the selection of at least one pixel.
The Board’s finding in that regard, which was consistent
with the testimony of Samsung’s expert, was supported by
substantial evidence.
E
Lastly, Prisua contends that Sitrick does not teach or
suggest the limitation of claim 11 that requires applying
“motion vectors” so that the edited video data stream re-
sulting from the substitution maintains the overall appear-
ance of motion produced by the original video data stream.
That part of claim 11 recognizes that if an original
video includes motion, one might want the user image that
is being substituted into the original video to track that
motion. For example, if the user wanted to replace an ac-
tress’s face with her own, the user would likely want to
make sure the actress’s body did not move in a way that
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left the substituted face behind. In order to accomplish
that objective, claim 11 requires that the motion vectors of
the first image be computed and applied to the second im-
age.
In concluding that the limitation providing for “apply-
ing the motion vectors in the second image” was taught in
Sitrick, the Board reasonably credited Samsung’s expert
testimony that motion vector information associated with
the first image in Sitrick would be applied to the second
image in order to maintain the placement and orientation
of the second image in relation to the first image.
The Board found that testimony to be consistent with
Sitrick’s disclosure that an “association means” would use
computed motion vector information from a first audiovis-
ual presentation to associate one or more replacement ob-
jects (i.e., second images) with a detected reference object
(i.e., the first image). We therefore conclude that substan-
tial evidence supports the Board’s finding that the “apply-
ing motion vectors to the second image” limitation of claim
11 was taught by Sitrick.
Because none of Prisua’s challenges to the Board’s
analysis with respect to claim 11 have merit, the Board’s
order that claim 11 is unpatentable for obviousness is af-
firmed.
Each party shall bear its own costs for this appeal and
cross-appeal.
AFFIRMED IN PART, REVERSED IN PART, AND
REMANDED