N OTE : This disposition is nonprecedential.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

______________________
J OHN C. C AREY , Carey Rodriguez Milian Gonya, LLP, Miami, FL, argued for appellant. Also represented by N ICHOLAS J. D OYLE

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R ICHARD L. R AINEY , Covington & Burling LLP, Washington, DC, argued for appellee. Also represented by B RADLEY K EITH E RVIN , R OBERT J ASON F OW LER

.

M ARY L. K ELLY , Office of the Solicitor, United StatesPatent and Trademark Office, Alexandria, VA, for intervenor. Also represented by P ETER J. A YERS , S ARAH E. C RAVEN , T HOMAS W. K RAUSE , F ARHEENA Y ASMEEN R ASHEED

.

______________________
Before D YK , B RYSON , and S TARK , Circuit Judges

. S TARK , 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, th e technology could allow a user to substitute her own face for a character’s or actor’s face in a video game or movie.

C laims 1

- 4 and 8 of the ’591 patent are at issue on appeal . C laim 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 adisplayable edited video data stream from an original video data stream, wherein at least one pixelin 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 Case: 21-1960 Document: 61 Page: 2 Filed: 06/30/2023PRISUA ENGINEERING CORP

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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 inpu t video data stream;an image display device displaying the original video stream ; a data entry device, operably coupled withthe image capture device and the image display device, operated by a user to select theat 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 selectedfrom a group of devices consisting of: a keyboard, 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 processing 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 device operably coupled with the interactive media apparatus; receiving a selection of the first image from the original video data stream; Case: 21-1960 Document: 61 Page: 3 Filed: 06/30/2023PRISUA ENGINEERING CORP

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extracting the first image; spatially matching an area of the second image to a n area of the first image in theoriginal video data stream, wherein spatially 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 spatiallymatched second image to generate the displayable edited video data stream from the original video data stream. ’591 patent 7: 14

- 54 (emphasis added). The two emphasized limitation s are referred to as the “image display device limitation” and the “data entry device limitation” respectively

. B oth are at issue in this appeal.

After Pri s ua sued Samsung Electronics America, Inc. (“Samsung”) for infringing the ’591 patent, Samsung petitioned the Board for inter partes review of cl aims 1

- 4, 8, and 11. See Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp

. , 948 F.3d 1342, 134 9- 50 (Fed. Cir. 2020) (explaining initial procedural history of this case). Samsung’s grounds for unpatentability were based on, as relevant here

, Patent Applicati on 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 issues presented in this appeal relate only to Sitrick and/orSenftner, for simplicity we refer just to these two references . O ur discussion of the obviousness grounds based on th o se two references applies equally to the combination grounds with which Samsung challenges claims 3 and 4. Case: 21-1960 Document: 61 Page: 4 Filed: 06/30/2023PRISUA ENGINEERING CORP

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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 integratingselected user images into the selected portion of the predefined audiovisual present ation.” J.A. 1970. Figure 1 of Sitrick 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 a n original video (120) to produce an o utput video (190) in wh ich the user specified image replaces a portion of the original video (12 3). 2 J.A. 1980 (Sitrick ¶ 31). Senftner similar ly teaches processes and devices for “creating personalized videos through partial image replacement.” J.A. 1 953 (Senftner 1:36

- 37).

The Board institute d in ter partes review and found claim 11 obvious in light of Sitrick. The Board further determin ed 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 discussing 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. Case: 21-1960 Document: 61 Page: 5 Filed: 06/30/2023PRISUA ENGINEERING CORP

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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 p reclude the Board from addressing patentability on obviousness (or anticipation ) grounds. See i d. 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 unpat entable 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 subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obviousat the time the invention was made to a person having ordinary skill in the art. ” 35 U.S.C. § 103 (a) (2011). 5 “Obviousness is a legal question based on underlying findings of fact.” Fleming v. Cirrus Design Corp. , 28 F.4th 1214, 1221

3 C laim 11

, unlike th e 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 Invent s Act governs. See 35 U.S.C. § 100 note. Case: 21-1960 Document: 61 Page: 6 Filed: 06/30/2023PRISUA ENGINEERING CORP

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(Fed. Cir. 2022) . Among those underlying issues of fact is

w hat the prior art reference discloses to an ordinarily skilled artisan

. See i d. We review the Board’s legal determinations de novo and it s factual findings for substantial evidence. See Almirall, LLC v. Amneal Pharm s . 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 inconsistent 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 e vidence.” Elbit Sys. of Am., LLC v. Thales Visionix, Inc. , 881 F.3d 1354, 1356 (Fed. Cir. 2018) ( internal quotation marks and citation omitted)

. W e “defer to the Board’s findings concerning the credibility of expert witnesses.” Yorkey v. Diab

, 601 F.3d 1279, 1284 (Fed. Cir. 2010).

III

Pri s ua identifies two purported errors in the Board’s analysis of claim 1. 6 First, Prisua argues that neither Sitrick nor Senftner discloses the image display device limitation. Second, Prisua contends that neither refer ence discloses the data entry device limitation. We find substantial evidence supports the Board’s conclusion t hat Sitrick 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. Case: 21-1960 Document: 61 Page: 7 Filed: 06/30/2023PRISUA ENGINEERING CORP

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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. A ccording to Pri s ua , Sitrick does not suggest that the original image is displayed on an image display device. In Prisua’s view, Sitrick’s F igure 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 aperson of ordinary skill in the art would understand Sitrick’s Figure 1 as including actual displ ays in its illustration

. The Board was free to credit Dr. Delp over Prisua’s expert, Dr. Yolanda Prieto ( who is also the ’591 patent’s inventor) , and we have no basis to question its decision to do

so. See Yorkey , 601 F.3d at 1284

. Sitrick explains that in F igure 1 “ representations of two people .

. . ar e visible in

. . . program video 120 ,” i.e., in the original v ideo 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 F igure 1 then the original video stream must be displayed and, therefore, Sitrick discloses “an image display device displaying the original video stream .” Accordingly, subs tantial evidence supports the Board’s findings with respect to the image display device limitation.

B

We now turn to the data entry device limitation. Prisua argues that th is limitation requires “a specific kind of data entry device: one that is

. . . ope rated by the user to select at least one pixel from the original video stream .” Case: 21-1960 Document: 61 Page: 8 Filed: 06/30/2023PRISUA ENGINEERING CORP

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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 entry device in which the user selects at least one pixe l from the replacement image

, not from the original video , and this finding does not demonstrate obviousness. See i d. (citing 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 Sitrick 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 i s the understandable consequence of Pri s ua’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. Pri s ua did not argue to the Board that there was a ny meaningful difference between the user selecting “ at least

on e pixel ” in the original video and selecting “ at least one pixel ” in the replacement image , and it never assert ed to the Board that Sitrick fails to teach the selection of at least one pixel in the original video

. Hence, when the Board explained that Sitr ick 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 affirm ing the Board’s conclusion that Sitrick disclose s the image display device, Prisua’s contention lacks merit. Case: 21-1960 Document: 61 Page: 9 Filed: 06/30/2023PRISUA ENGINEERING CORP

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much greater specificity and clarity, the Board had no reason t o believe its findings as to Sitrick were incomplete.

I n 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 “necessarily 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 artisan “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 replacement video. J.A. 1979 ( Sitrick ¶¶ 7, 13).

Fi nally, s ubstantial evidence supports the Board’s additional findings as to Sitrick ’s disclosures that are relevant to the data entry device limitation. Claim 1 of the ’591 patent states that the “data entry device is selected from agroup of devices consisting of: a keyboard” among other options. Sitrick represents that it s invention can be implemented 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” include s a data entry device like a keyboard, J.A. 2299 ( Yolanda Prieto Dep. ) . Samsung’s expert , D r. Delp, testified that a skilled artisan would “recognize that the data entry device(s) connected to the general purpose computer Case: 21-1960 Document: 61 Page: 10 Filed: 06/30/2023PRISUA ENGINEERING CORP

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would be operably connected to the image capture deviceas well, which would enable user interaction with the image capture d evice

, ” 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 unambiguous that the substituted image is “user specified,” suggesting (if not requiring) there exists a data entry system 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 patent are unpatentable as obvious.

AFFIRMED

C OSTS Costs to Samsung. Case: 21-1960 Document: 61 Page: 11 Filed: 06/30/2023