A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

M&K Holdings, Inc. v. Samsung Electronics Co., No. 2020-1160 (Fed. Cir. (PTAB) Feb. 1, 2021). Opinion by Bryson, Joined by Moore and Chen.

Samsung filed a petition for IPR asserting unpatentability of all claims in M&K’s patent directed to an efficient method for compressing video files. Samsung asserted that a reference called “WD4-v3” anticipated claims 1, 2, 5, and 6. Samsung also asserted that claims 3 and 4 were rendered obvious by WD4-v3 in combination with “Park” and “Zhou.” Notably, Samsung did not assert anticipation as to claim 3. In opposition, M&K contended that none of these references were publicly accessible.

The Patent Trial and Appeal Board disagreed with M&K, concluding that all three references were publicly accessible. The Board then held that claims 1, 2, 3, 5, and 6 were anticipated by WD4-v3, and that claim 4 was rendered obvious by the combination of asserted references.

On appeal, M&K challenged the public accessibility of two of the references, Park and Zhou, and also challenged the Board’s finding that claim 3 was anticipated since Samsung’s petition had asserted only obviousness.

On the first issue, the Federal Circuit held that substantial evidence supported the Board’s finding that “persons of ordinary skill in video-coding technology could have accessed Park and Zhou through reasonable diligence through the JCT-VC organization,” which was “a prominent standards-setting organization” for video standards. The Park and Zhou references were available through JCT-VC’s website and had been presented at JCT-VC meetings without any expectation of confidentiality.

On the second issue, the Federal Circuit agreed with M&K and therefore vacated the Board’s finding that claim 3 was anticipated. Samsung did not assert anticipation of claim 3 at any point in the IPR proceeding. The Federal Circuit thus held that “the Board deviated impermissibly from the invalidity theory set forth in Samsung’s petition when it held that claim 3 was anticipated by WD4-v3.” M&K was not put on notice, which “amounts to a marked deviation” that deprived M&K of the opportunity to challenge the Board’s interpretation of claim 3.

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