PATENT CASE OF THE WEEK
Koninklijke Philips N.V. v. Google LLC, et al., Appeal No. 2019-1177 (Fed. Cir. Jan. 30, 2020)
In the Federal Circuit’s only precedential decision this week, the Court affirmed a PTAB finding that claims of a patent directed to downloading and streaming services were invalid as obvious. In doing so, the Court established precedent concerning the extent to which parties can rely on evidence of “general knowledge” in the art to fill claim limitations, and further reinforced that the PTAB may only institute review on grounds specifically pleaded in the Petition.
Streaming services previously had problems with delay because the entire file needed to get downloaded before it could play. In the alternative, two-way communications were required. The patent at issue purported to solve those problems by using multiple files that could play sequentially, and recited a system to effectuate that.
Google filed a petition for inter partes review based on two prior art references, SMIL 1.0 and Hua. Hua concerned “pipelining,” and was relied on to provide “general knowledge” in the art at the time. In its petition, Google advanced theories of anticipation by SMIL and obviousness over SMIL by itself—the latter theory was that the person of ordinary skill in the art would have thought to add “pipelining” to SMIL. Google did not advance a theory of obviousness over the combination of SMIL and Hua, but merely relied on Hua for its presentation of the “general knowledge” in the art. The Board nonetheless instituted review based on anticipation by and obviousness over SMIL, and then on a third ground: obviousness over SMIL in combination with Hua.
The Federal Circuit reversed as to the last institution ground and held that the PTAB erred by instituting on a ground not advanced by the petitioner in the Petition, relying on SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2019). Google had argued that the PTAB instituted over SMIL in combination with Hua only “for clarity” and based on “the same arguments and evidence” that Google advanced in the Petition. The Federal Circuit held that this exceeded the PTAB’s discretion, and struck ground three.
With respect to obviousness over SMIL by itself, Philips argued that the Board erred by relying on “general knowledge,” as provided in Hua and an expert declaration, to supply a missing claim limitation. Philips first argued that relying on “general knowledge” violated 35 U.S.C. § 311(b), because it was not a “patent or printed publication.” The Court rejected that theory, holding that “the skilled artisan’s knowledge” is relevant to any obviousness analysis.
Second, Philips argued, relying on Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355 (Fed. Cir. 2016), that “common sense and common knowledge” cannot normally be used “to supply a limitation that was admittedly missing from the prior art,” and that it is only appropriate when “the missing limitation in question is unusually simple and the technology particularly straightforward.” The Court distinguished Arendi, and held it inapplicable to this case. In Arendi, the Court explained, the Board “relied on nothing more than conclusory statements and unspecified expert testimony.” In this case, the Board relied on expert evidence, corroborated by Hua.
The Court then analyzed the evidence and found that substantial evidence supported the Court’s conclusion that the claims were invalid as obvious.
The opinion can be found here.
