Accessibility, not Access is Proper Legal Touchstone for § 102(B)
The US Court of Appeals for the Federal Circuit found error in a decision by the Patent Trial and Appeal Board (PTAB) for its application of the legal standard for public accessibility under 35 USC § 102(b). Samsung Elecs. Co., Ltd. v. Infobridge Pte. Ltd., Case Nos. 18-2007, -2012 (Fed. Cir. July 12, 2019) (O’Malley, J).
Samsung challenged an Infobridge patent in two inter partes review proceedings before the PTAB. The PTAB instituted review in both proceedings but upheld the patent claims after finding that Samsung failed to show that the prior art reference it relied upon in its prior art combinations was publicly accessible before the patent’s critical date (and thus could not be considered prior art). Samsung appealed.
To the extent that the PTAB resolves factual issues in determining whether a reference is prior art under § 102, the Federal Circuit reviews such factual findings for substantial evidence. The ultimate question of whether a reference is prior art under § 102(b) is a legal question subject to de novo review.
Under pre-America Invents Act § 102(b), a person is not entitled to a patent if her invention was “described in a printed publication . . . more than one year prior to the date of the [patent] application.” The Federal Circuit and its predecessor, the US Court of Customs and Patent Appeals, have read this statutory definition to require that a putative prior art reference be printed and accessible to the public. What constitutes a “printed publication” is determined in light of the technology employed, and public accessibility is the “touchstone.” Jazz Pharm. v. Amneal Pharm (IP Update, Vol. 21, No. 8). A reference is publicly accessible if “persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Acceleration Bay v. Activision Blizzard (IP Update, Vol. 21, No. 12).
Public accessibility can depend on a case-by-case examination of how a particular reference was disseminated, to whom, for how long and under what circumstances. That a reference is uploaded to a website or deposited in a library, and then indexed or catalogued in some way, can indicate public accessibility. Public accessibility generally requires that the document be “meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it.” Acceleration Bay. Yet, even absent such indexing, evidence that “a person of ordinary skill interested in [the relevant subject matter] would have been independently aware of [the website]” and that “such an interested researcher would have found [the reference] using that website’s own search functions and applying reasonable diligence” (Voter Verified v. Premier Election Solutions (Fed. Cir. 2012)) or “would have had reason to [find the website at issue]” (Jazz) helped the Court’s finding of public accessibility.
In this case, the challenged patent generally relates to encoding and decoding video data. For purposes of appeal, the parties agreed that the patented methods are essential to the High Efficiency Video Coding standard (H.256 standard). The prior art reference at issue was its working draft, “WD4: Working Draft of High-Efficiency Video Coding” (WD4), which was developed by the Joint Collaborative Team on Video Coding (JCT-VC). Samsung offered testimony of Benjamin Bross, the lead author of WD4, and pointed to three examples of disclosures as establishing, independently or together, public accessibility of WD4 of the H.256 standard prior to the critical date.
In July 2011, JCT-VC members met in Torino, Italy, to discuss development of the H.256 standard. Developing WD4 was one of the “primary goals” of the Torino meeting. WD4 was discussed and approved at the November 2011 JCT-VC meeting in Geneva, Switzerland.
Infobridge argued, and the Federal Circuit agreed, that by not making such arguments before the PTAB, Samsung had waived any public accessibility demonstrated from discussion of WD4 in Torino or dissemination of WD4 in Geneva.
JCT-VC and MPEG Websites
WD4 was also uploaded to the JCT-VC and MPEG websites on October 4, 2011. Users had to follow at least four steps to access WD4:
Navigate to the website
Select a menu option to view “All meetings” held by the JCT-VC
Select “Torino” from available meetings (not identified by subject matter)
Select WD4 from a list of “hundreds” of documents organized by identifying number
The MPEG website required a login and password to access materials, and was organized similarly, such that a user would have to navigate to the relevant meeting and select the document.
The Federal Circuit discounted testimony by Bross that persons interested in H.256 would regularly visit the JCT-VC site and review its contents. The PTAB found, and the Court agreed, that Samsung did not establish that WD4 was accessible to anyone other than JCT-VC members, in part because identifying a meeting location was key to navigating the websites. Samsung presented no evidence that WD4 could be located based on its subject matter. The Court deemed that a work is not publicly accessible if the only people who know how to find it are the ones who created it. The Court thus agreed with the PTAB that accessibility to JCT-VC members did not equate to public accessibility, and declined to reweigh the evidence reviewed by the PTAB.
Also on October 4, 2011, Bross emailed a download link for WD4 to a JCT-VC listserv of members who had attended the Torino meeting and “interested individuals.” Bross testified that “anyone with a valid e-mail address requesting subscription was typically approved.” The PTAB concluded that it could not determine whether “those 254 individuals represented a significant portion of those interested and skilled in the art,” and therefore whether the email was a “limited distribution” or enough to establish public accessibility.
On this document, the Federal Circuit agreed with Samsung that the PTAB erred by confusing access with accessibility. The standard for public accessibility is whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference. Under applicable case law, if accessibility is proven, there is no requirement to show that particular members of the public actually received the information or inspected the reference. Therefore, a petitioner need not establish that specific persons actually accessed or received a work to show that the work was publicly accessible. The Court remanded to the PTAB to consider whether, based on the listserv email, the evidence established that an ordinarily skilled artisan could have accessed the WD4 reference after exercising reasonable diligence. The Court suggested the PTAB examine whether a person of ordinary skill, exercising reasonable diligence, would have joined the listserv, and the circumstances of the listserv email itself—for example, why the email was sent and whether it was covered by an expectation of confidentiality.