Federal Circuit Partially Vacates PTAB Decision in Mixed Victory for Samsung
On February 1, 2021, the Federal Circuit partially vacated the PTAB’s invalidation of a video compression patent challenged by Samsung, holding that the Board “deviated impermissibly from the invalidity theory set forth in Samsung’s petition,” but affirming that Samsung’s relied-upon references were publicly accessible.
Samsung filed a petition for inter partes review of M & K’s patent, challenging all claims as obvious and asserting several prior art references. One asserted reference, called “WD4-v3,” was generated by a joint task force entrusted with establishing standards for the high-efficiency video coding industry. This task force held quarterly meetings to discuss input documents that proposed changes to a standard working document. The WD4-v3 reference was the joint task force’s standard working document, and two other asserted references—Park and Zhou—were input documents. All references were uploaded to the joint task force’s website in 2011. Among other arguments, M & K challenged Park and Zhou as not publicly accessible.
The Board disagreed with M & K, finding all of Samsung’s references publicly accessible. Applying these references, the Board held, among other things, that claim 3 was unpatentable. Although Samsung’s IPR petition explicitly conceded that WD4-v3 did not disclose certain limitations recited in claim 3, the Board nevertheless concluded that claim 3 was anticipated by WD4-v3. The Board reasoned that even though claim 3 recites additional limitations to those in other anticipated claims, no additional references would be required to find claim 3 unpatentable. M & K appealed.
In a partial win for Samsung, the Court affirmed the Board’s decision that Samsung’s references were publicly accessible and therefore qualified as prior art.
On appeal, M & K argued that the Park and Zhou references were not publicly accessible because a person of ordinary skill in the art could not have located the documents by exercising reasonable diligence. Although the joint task force was prominent, M & K argued, the papers were not. The Court agreed with the Board, noting that the relevant inquiry was instead “whether the channel through which the references were publicized was prominent or well-known among persons of ordinary skill in the art.”
Applying this standard, the Court found that the Board had more than enough evidence showing prominence. First, the Board noted that when the task force was created, a public call for proposals was issued and publicized through “a highly influential trade journal.” Second, the Board found that skilled artisans would have been motivated to monitor the organization’s website to ensure their products were consistent with developing standards. And finally, the Board reasoned that the Park and Zhou references were discussed at task force meetings, summarized in meeting reports, and made available upon request after the meetings.
M & K further argued that the functionality and search capabilities of the website made the references inaccessible, and that even if a person of ordinary skill in the art came across the website, they would not be able to search the content of the documents to locate the Park and Zhou references.
The Court again disagreed, pointing out that the law was not so restrictive. The correct question, in the Court’s view, was whether interested users of the website could have located the Park and Zhou references through reasonable diligence. The Court emphasized the Board’s finding that meeting reports directed readers to the task force website and that the website had title search functionality. Furthermore, the Board found that both the Park and Zhou references were effectively indexed with descriptive titles that enabled searching by subject matter.
The Court thus affirmed the Board’s holding that Park and Zhou were printed publications and eligible prior art.
M & K also argued on appeal that by holding claim 3 of their patent unpatentable based on anticipation, the Board committed procedural error under the Administrative Procedures Act (APA), which requires the Board to inform patent owners of all asserted claims and grounds. Because Samsung’s petition only challenged claim 3 on a theory of obviousness, M & K argued it was deprived of notice under the APA. Further, M & K argued, it was deprived of notice when the Board based its adjudication of claim 3 on a claim interpretation not offered by either party and not disclosed until the Board’s decision.
The Federal Circuit agreed with M & K. Highlighting Samsung’s admission that WD4-v3 did not anticipate claim 3—and its failure to assert anticipation as a ground for invalidity in its IPR petition—the Federal Circuit held that the Board “deviated impermissibly from the invalidity theory set forth in Samsung’s petition.” The Court thus vacated the Board’s finding that claim 3 was unpatentable.