M & K Holdings, Inc. v. Samsung Elect. Co., Ltd., Appeal No. 2020-1160 (Fed. Cir. Feb. 1, 2021)
In only its third precedential patent case of 2021, the Federal Circuit addressed two discrete issues. It established further precedent concerning whether references on web pages and as part of meetings of interested artisans qualify as printed publications for purposes of prior art. It also returned to the issue of the proper scope of the PTAB’s authority in deciding inter partes reviews.
The patents at issue involve methods for compressing video files. Samsung filed IPRs alleging a combination of anticipation and obviousness over four papers. The four papers were all generated in connection with the work of a joint task force to establish industry standards for high-efficiency video coding. That task force consisted of representatives from various technology companies, universities, and research institutions. Participants can submit “input documents,” and they get discussed at quarterly meetings. If joint task force members agree to proposed changes, they are incorporated into a working-draft document. One of the documents relied on by Samsung in the IPR was a working-draft document; the other two were input documents. All were uploaded to the joint task force’s website prior to the priority date for the patent at issue.
For two of the claims (claims 3 and 4), Samsung asserted that the claims were invalid as obvious over all three references.
M & K challenged that the papers were prior art. The PTAB found that they were prior art. It found that all claims were invalid over the prior art. The Board found claim 3 anticipated by the working-draft document, whereas Samsung had asserted only that claim 3 was obvious over that document and the two other references.
The Federal Circuit affirmed that the references were prior art. The Court acknowledged two threads of cases concerning prior publications: “One line of cases on public accessibility relates to the presentation of documents at a conference, trade show, or group meeting. … Another line of cases relates to documents that are available in a repository, whether on the Internet or at a brick-and-mortar location such as a library.” Here, the Court found that the two threads of cases overlapped. The materials were both widely circulated at meetings with 200-300 interested participants who reflected the interested community. They were also available through the joint task force’s website. The Court rejected M & K’s theory that the input papers were not “prominent,” holding that the proper inquiry is whether “the channel through which the references were publicized is prominent or well-known among persons of ordinary skill in the art.” Here, the joint task force “as a whole was prominent among the community of skilled artisans.” The Court also dispensed with M & K’s other theories that the website was not sufficiently searchable.
As to claim 3, the Court reversed and vacated the Board’s decision. Samsung had argued in its petition that claim 3 was invalid solely on a theory of obviousness. The Board found the claim anticipated based on a different claim interpretation than was offered by either party. The Board then found the claim obvious under the theory that anything that is anticipated is obvious. The Federal Circuit disagreed, because M & K was not put on notice of the theory underlying the Board’s reasoning based on that new claim interpretation. The Board was bound by the Administrative Procedures Act to render an opinion based on the petition, and not to rely on new theories not presented at the petition stage. The Court held that, even though “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 put on notice that the Board might find that [a single reference] disclosed all of the limitations in claim 3 and might invalidate claim 3 based on anticipation.”
A copy of the opinion can be here.
By Nika Aldrich