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On July 22, 2011, ALJ E. James Gildea issued Order No. 17 in Certain Motion-Sensitive Sound Effects Devices And Image Display Devices and Components and Products Containing Same (Inv. No. 337-TA-773).  In the Order, ALJ Gildea denied Respondent Canon Inc. and Canon U.S.A., Inc.’s (collectively “Canon”) motion for summary determination that claims 1 and 2 of U.S. Patent No. 5,825,427 (the ‘427 patent) are invalid as anticipated or indefinite, but granted Canon’s motion that claim 3 of the ‘427 patent was invalid as anticipated.

Anticipation of Claims 1 and 2 of the ‘427 Patent

According to the Order, Canon argued that Japanese Published Application No. H04-322577 (the ‘577 publication) to Toshiba Corp. anticipated claims 1, 2, and 3 of the ‘427 patent.  Canon argued the ‘427 patent teaches that the amount of blank space that results from a standard definition image displayed on a high-definition aspect ratio is minimized when the aspect ratio of the screen is between the standard aspect ratio of 4:3 and the high definition ratio of 16:9.   According to the Order, Canon also argued that the ‘577 publication disclosed the same problem and solution described in the ‘427 patent, only in greater detail, and therefore it anticipated claims 1 and 2 of the ‘427 patent, regardless of any claim construction that may issue during this investigation.  Canon also argued that the ‘577 publication disclosed an aspect ratio within the claimed ranges of the ‘427 patent (which claimed a rectangular configured video screen and first and second image producing means reciting aspect ratios between 1.4:1 and 1.65:1 in claim 1, with dependent claims 2 and independent claim 3 reciting aspect ratios between 1.5:1 and 1.6:1, and 1.45:1 and 1.6:1, respectively), and a signal conversion circuit and MUSE decoder in the ‘577 publication corresponded to claim 1 and 2’s first and second image producing means, respectively.

Complainant Ogma, LLC (“Ogma”), relying upon an expert declaration, and supported by the Commission Investigative Staff (“OUII”), argued that a person of ordinary skill would not understand the MUSE decoder and signal conversion circuit of the ‘577 publication to have the same or equivalent structure or function as the video image processor of the ‘427 patent.

ALJ Gildea determined that it could not be concluded that no material facts were in dispute, given that Canon had not provided sufficient evidence regarding the understanding of a person of ordinary skill in the art, particularly as to whether the MUSE decoder of the ‘577 reference is identical or equivalent to the video image processor of the ‘427 patent, and Ogma’s expert declaration overcame many of Canon’s assertions.  Accordingly, ALJ Gildea denied Canon’s motion for summary determination that claims 1 and 2 of the ‘427 patent are anticipated by the ‘577 reference.

Indefiniteness of Claims 1 and 2 of the ‘427 patent

According to the Order, Canon argued that the two “image producing means” of claims 1 and 2 of the ‘427 patent, as means-plus-function limitations, do not have sufficient structure described in the specification, which at most refers to a “processor of the image display system.” Figures 6-9 of the specification are pictorials, which according to Canon “only show adjusted aspect ratios but do not provide any description of the corresponding structure.”  Canon also argued that the “processor” language is the equivalent of a black box performing image producing functions without explaining how it goes about accomplishing this function.

Ogma, again supported by OUII, opposed Canon’s indefiniteness arguments on the grounds that Canon offered no claim construction, nor evidence on how a person of ordinary skill would understand the ‘427 patent.  Ogma argued that its expert declaration provided sufficient evidence that a person of ordinary skill would understand that a video image processor is a structure that corresponds to the first and second image producing means of claims 1 and 2.

ALJ Gildea agreed with Ogma and determined that Cannon put forth no evidence of how a person of ordinary skill in the art would interpret the ‘427 patent, while Ogma’s expert declaration provided sufficient evidence on precisely this point, such that unresolved issues of material fact precluded summary determination that the ‘427 patent is indefinite.  ALJ Gildea therefore denied Canon’s motion to summarily determine that claims 1 and 2 are indefinite.

Anticipation of Claim 3 of the ‘427 patent

According to the Order, Canon, supported by OUII, argued that claim 3 of the ‘427 patent describes an image display system comprising a rectangular video screen and an aspect ratio between 1.45:1 and 1.60:1, and that the ‘577 publication discloses a rectangular display with a 14:9 ratio (which is equivalent to a 1.55:1 ratio), thereby disclosing every limitation of claim 3.   ALJ Gildea determined that Ogma did not address the ‘577 reference’s anticipation, but rather challenged the authenticity of the ‘577 reference and the certification of its English translation. ALJ Gildea further determined that Canon’s evidence in the form of a declaration stating (1) that the ‘577 reference was downloaded directly from the Japanese patent office’s website, and (2) that a further exhibit was a translation of the ‘577 publication, was sufficiently reliable under these circumstances for demonstrating publication of the ‘577 reference and its English translation.  Since the parties did not appear to dispute that every element of claim 3 is met by the ‘577 reference, ALJ granted Canon’s motion for summary determination that claim 3 of the ‘427 patent is invalid as anticipated by the ‘577 reference.