On Feb. 1, Sony Interactive Entertainment, LLC (“Sony”) filed a Petition for Inter Partes Review of U.S. Patent No. 9,503,742 (the “’742 Patent”). The prosecution history of the ’742 Patent is not something you see every day: a dispute over a typographical mistake followed an allowance because, despite an admittedly valid rejection, “applicant wishes to obtain a patent.”
As described by Sony, the ’742 Patent relates to stereoscopic image decoding via data compression. It seems likely that Sony’s filing of the Petition for Inter Partes Review relates to their sales of PlayStation VR headsets.
Strangely, the ’742 Patent has only one claim, which Sony claims should have never been allowed. According to Sony, during prosecution of the ’742 Patent, the patent examiner made a typographical mistake in an office action: forgetting to cite U.S. Patent No. 5,907,364 to Furuhata et al. (“Furuhata”) to reject dependent claim 23, though Furuhata was cited to reject the independent claim from which claim 23 depended. On appeal, the Board affirmed all of the examiner’s rejections except for claim 23, noting that the examiner’s error was “perhaps inadvertent” and opening the door for a correction of the rejection. Perplexingly, the examiner then allowed claim 23, noting in the Notice of Allowance:
The omission of the Furuhata reference appears to be a typographical mistake . . . Examiner informed applicant’s representative that claim 23 should have been affirmed by the board for the same reasons as set forth for claim 1. However, applicant’s representative informed Examiner that applicant wishes to obtain a patent since claim 23 was reversed by the board.
It will certainly be amusing to see what the Board has to say about the above allowance.