If You Seek or Browse and Can Find, It’s Publicly Available, but Anticipation Isn’t Obvious and Requires Notice
The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board cannot sua sponte invalidate a claim as anticipated under § 102 unless that specific statutory ground had previously been noticed. M & K Holdings, Inc. v. Samsung Electronics Co., Ltd., Case No. 20-1160 (Fed. Cir. Feb. 1, 2021) (Bryson, J.)
In response to M & K Holdings’ suit for patent infringement, Samsung filed an inter partes review (IPR) petition seeking cancellation of all claims of the asserted patent as obvious. The patent is directed to an efficient method for compressing video files by “decoding a moving picture in inter prediction mode,” using a motion vector to quantify where “reference pictures are used to estimate motion of a current block” over the video duration. Samsung’s petition relied on references generated in connection with the Joint Collaborative Team on Video Coding (JCT-VC), which established industry standards for high-efficiency video coding (HEVC). All three prior art references were uploaded to JCT-VC’s website before the critical date.
After the Board held all claims of the patent unpatentable, M & K appealed, arguing that the Board erred by relying on references that do not qualify as prior art printed publications under 35 USC § 102, and by finding claim 3 anticipated when the petition for IPR asserted only obviousness as to that claim.
Public Accessibility and Printed Publications
M & K argued that a person of ordinary skill could not have located two of the three prior art references by exercising reasonable diligence, and therefore the Board’s holding that those references were publicly accessible was erroneous. Specifically, M & K argued that the structure and search capabilities of the JCT-VC website (requiring navigating to the JCT-VC landing page, clicking on the “All meetings” link and selecting a particular meeting in order to access documents, without any explanation that the “All meetings” label contains a document repository, and with no search functionality on the landing page or the “All meetings” page) meant that even if a user happened to navigate to a meeting page of the website, the user could not search documents by content, but could search only by date, title and number.
The Federal Circuit disagreed, explaining that public accessibility does not require a website’s landing page to have search functionality. Instead, “given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located [the references] through reasonable diligence.” The Court agreed that substantial evidence supported that interested users could have done so.
Regardless of whether the website described itself as a document repository, the Federal Circuit noted that a skilled artisan browsing the JCT-VC website would understand that it was structured to serve the JCT-VC’s purpose of developing HEVC standards through member meetings and communications. Therefore, a skilled artisan browsing the JCT-VC website would have realized that documents are hosted under the meeting pages and would have known to navigate to the meeting pages, to search documents on those pages, and to navigate until the search was satisfied.
The Federal Circuit gave short shrift to M & K’s argument that the site lacked full-content-search capability. Per Blue Calypso, a factor relevant to public accessibility is whether a repository indexes its documents or otherwise categorizes them by subject matter. Here, the documents on the JCT-VC website meeting pages were effectively indexed by subject matter because of its title-search functionality and because the references in question have descriptive titles. Therefore, the Court agreed that the Board correctly found that the references were publicly accessible. Another Federal Circuit case, In re Lister, had concluded that a reference with a descriptive title was publicly accessible as of the date it was posted to an internet database on which users “could perform keyword searches of the titles, but not the full texts, of the works.”
The Federal Circuit further explained that Samsung was not required to show 1) that interested artisans actually accessed the prior art on the website (per Infobridge, “no requirement to show that particular members of the public actually received the information”); 2) that a reference was uploaded before it was presented to the JCT-VC group (per MIT, an oral presentation, and distribution of copies afterward without restrictions could be sufficient); or 3) that oral presentations disclosed the exact material relating to Samsung’s obviousness theories in the circumstances of this case.
Anticipation versus Obviousness
M & K argued that the Board’s decision as to claim 3 (which was based on a claim interpretation that was not offered by either party and was not disclosed until the Board’s final written decision) deprived it of notice. Samsung countered that the Board’s analysis was a simpler path to invalidating claim 3 and one that was inherent in Samsung’s obviousness theory ince a reference that anticipates a claim also renders that claim obvious. Samsung also argued that & K was on notice of the prior art the Board used to invalidate claim 3, and thus was not denied notice of the related ground under which claim 3 was unpatentable.
The Federal Circuit disagreed, concluding that the Board deviated impermissibly from the invalidity theory set forth in Samsung’s petition when it held claim 3 anticipated. Under the Administrative Procedure Act (APA), in formal adjudications such as IPR proceedings, the Board must “timely inform the patent owner of ‘the matters of fact and law asserted'” and “give all interested parties the opportunity to submit and consider facts and arguments.” For example, in Arthrex the Court examined whether “the Board departed markedly from the evidence and theories presented by the petition or institution decision, creating unfair surprise.”
Here, although M & K was aware of the prior art used to invalidate claim 3 given the obviousness combination asserted against that claim, M & K was not on notice that the Board might find disclosure of all of the limitations in a single reference. Thus, the Federal Circuit found the Board’s action amounted to a marked deviation.
The Federal Circuit analogized the situation to EmeraChem, where the APA was deemed violated when the Board invalidated a claim based on a reference that the petitioner did not substantively rely upon, but only broadly alleged as relevant, with respect to that particular claim. Specifically, the Court not only viewed the Board’s anticipation finding as not inherent in Samsung’s obviousness theory, but also saw Samsung’s obviousness position as contradicting the Board’s conclusion of anticipation. In particular, Samsung’s petition expressly stated that the primary prior art reference did not disclose the “predetermined block” limitation of claim 3, and argued obviousness as a substitute for that lack of disclosure. At no point during the proceedings did Samsung assert or otherwise disclose the particular claim interpretation and anticipation theory adopted by the Board.
Practice Note: Standards-based working groups may especially benefit from indexing, providing a search feature and using descriptive titles for their document repositories. Such fairly commonplace website file location tools could be a critical difference to demonstrate public availability of teachings against future patent claims.
When appropriate, practitioners should include and plead both anticipation and obviousness in America Invents Act petitions, such as where obviousness can be pled in the alternative to cover a wider scope of arguments.