Samsung Electronics America, Inc. v. Prisua Engineering Corp., No. 19-1169 (Fed. Cir. 2020)
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Prisua’s patent, entitled “Video Enabled Digital Devices for Embedding User Data in Interactive Applications,” is directed 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 object.” The claims at issue are directed to methods and apparatuses for “generating a displayable edited video data stream from an original video data stream.” The Patent Trial and Appeal Board instituted inter partes review (IPR) and held that claim 11 was unpatentable for obviousness but declined to analyze whether other challenged claims were unpatentable as anticipated or obvious, finding those claims indefinite.
The Federal Circuit affirmed in part. The IPR statute does not authorize the Board to cancel challenged claims for indefiniteness. The scope of IPR is found in section 311(b), Chapter 31 of Title 35. The scope of post-grant review is in section 321(b), Chapter 32. The use of the word “patentability” in the final written decision provision of each chapter refers to the previously defined scope of the particular review in question. Patentability under section 318(a) refers to the limited grounds of unpatentability described in section 311(b); patentability under section 328(a) refers to the broader grounds of unpatentability described in section 321(b). Reversing in part, the court rejected the Board’s conclusion that the term “digital processing unit” invoked means-plus-function claiming, and that for that reason the remaining claims could not be analyzed for anticipation or obviousness.
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