IP Law Daily, PATENT—Fed. Cir.: PTAB’s finding that image display system patent claims were obvious reversed, (Oct 13, 2023)

By Kevin M. Finson, J.D.

Patent claims directed at a digital system for displaying and modifying images were invalid as obvious because a prior art reference clearly disclosed the disputed “generating” claim term.

The Patent Trial and Appeal Board erred in finding claims of a patent related to the display and modification of images non-obvious, the U.S. Court of Appeals for the Federal Circuit has held. A prior art reference clearly disclosed the disputed limitation (Sony Interactive Entertainment LLC v. Intellectual Pixels Ltd., October 13, 2023, Dyk, T.).

Intellectual Pixels Limited (IPL) was the owner of U.S. Patent No. 10,681,109 (the ’109 patent), which claimed “an image display system and method of displaying images on a client through the use of the resources of a remote visual server.” Sony Interactive Entertainment, LLC (Sony) petitioned for inter partes review of several claims of the ’109 patent, arguing they were obvious in light of the prior art. The Patent Trial and Appeal Board (PTAB) instituted review and found that the challenged claims were non-obvious because the prior art references did not disclose the “generating” limitation, which required the patented server system to generate a new image based on an original image and modification data submitted by client systems. Sony appealed.

Obviousness. The sole dispute on appeal was whether a prior art reference, U.S. Patent No. 6,409,602 (Wiltshire), disclosed the “generating” limitation. The Board had held that it did not, finding that Wiltshire only disclosed selecting from among already available images to display rather than the generation of new images.

The court determined that the Board had erred in reaching this conclusion because it required ignoring a portion of Wiltshire’s specification, which explained that under certain conditions the claimed system would generate a new image. Additionally, the court found that the Board had erred in its interpretation of the testimony of IPL’s expert, who had testified that Wiltshire allowed for the selection from among preexisting images, but who did not actually opine that Wiltshire did not also disclose the generation of new images.

The court vacated the finding of non-obviousness and remanded for further proceedings.

The Case is No. 22-2118.

Attorneys: James Murphy Dowd (Wilmer Cutler Pickering Hale and Dorr LLP) for Sony Interactive Entertainment LLC. Douglas R. Wilson (Armond Wilson LLP) for Intellectual Pixels Ltd.

Companies: Sony Interactive Entertainment LLC ; Intellectual Pixels Ltd.

Cases: Patent FedCirNews