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`NOTE: This disposition is nonprecedential.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.
`
`
`

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`Case: 21-1960 Document: 61 Page: 2 Filed: 06/30/2023
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`2
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`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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`Case: 21-1960 Document: 61 Page: 3 Filed: 06/30/2023
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`PRISUA ENGINEERING CORP. v.
`SAMSUNG ELECTRONICS AMERICA, INC.
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`3
`
`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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`PRISUA ENGINEERING CORP. v.
`SAMSUNG ELECTRONICS AMERICA, INC.
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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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`Case: 21-1960 Document: 61 Page: 5 Filed: 06/30/2023
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`PRISUA ENGINEERING CORP. v.
`SAMSUNG ELECTRONICS AMERICA, INC.
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`5
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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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`PRISUA ENGINEERING CORP. v.
`SAMSUNG ELECTRONICS AMERICA, INC.
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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.
`
`jurisdiction under 35 U.S.C.
` The Board had
`jurisdiction under 28 U.S.C.
`§ 316(c).
` We have
`§ 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.
`
` 4
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`PRISUA ENGINEERING CORP. v.
`SAMSUNG ELECTRONICS AMERICA, INC.
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`7
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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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`PRISUA ENGINEERING CORP. v.
`SAMSUNG ELECTRONICS AMERICA, INC.
`
`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 ENGINEERING CORP. v.
`SAMSUNG ELECTRONICS AMERICA, INC.
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`9
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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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`PRISUA ENGINEERING CORP. v.
`SAMSUNG ELECTRONICS AMERICA, INC.
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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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`PRISUA ENGINEERING CORP. v.
`SAMSUNG ELECTRONICS AMERICA, INC.
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`11
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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.
`
`