PTAB Strategies and Insights - February 2021: M&K Holdings v. Samsung

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Samsung sought inter partes review of M&K’s U.S. Patent No. 9,113,163. The Board held all claims unpatentable. M&K appealed, arguing that the Board erred by relying on references that do not qualify as prior art printed publications under 35 U.S.C. § 102. In addition, M&K argued that the Board erred by finding claim 3 anticipated when the petition for inter partes review asserted only obviousness as to that claim. The Court affirmed the Board’s decision with respect to the printed-publication issue, holding that the Board’s decision was supported by substantial evidence. But the Court agreed with M&K with respect to claim 3 and vacated and remanded the Board’s decision. This case provides an excellent overview of the latest printed publication jurisprudence and a reminder that the Board is bound by the APA.

Public accessibility of printed publications is highly fact-dependent

On the printed publication issue, Samsung’s petition relied on three references – WD4-v3, Park, and Zhou. These documents were generated in connection with the work of a joint industry standard-setting task force. The task force consisted of representatives from technology companies, universities, and research institutions. It held quarterly meetings at which members submit and discuss input documents that propose changes to the standards. If the task force members agree to the proposed changes, those changes are incorporated into a working-draft document. WD4-v3 is a working-draft document, while Park and Zhou are input documents. All three references were uploaded to the task force’s website before the earliest priority date of the ’163 patent. M&K challenged whether WD4-v3, Park, and Zhou constituted printed publications under 35 U.S.C. § 102. M&K contended that none of the three references were publicly accessible, i.e., that interested persons of ordinary skill could not have accessed any of those references by exercising reasonable diligence.

Whether a reference qualifies as printed publication under §102 is a question of fact and the Court determined that substantial evidence supported the Board’s decision. In affirming, the Court recognized two separate lines of cases dealing with public accessibility. One line of cases 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.

Synthesizing those lines of cases, the Court found the following Board findings to be relevant: (1) Park and Zhou, were presented at task force development meetings, (2) those meetings were attended by between 200 and 300 interested persons, (3) the conferees had discussed Park and Zhou at the meetings, (4) the task force meeting reports summarized the Park and Zhou discussions, (5) those discussions and summaries were conducted without any expectation of confidentiality, (6) full copies of the Park and Zhou references were made available to interested persons by no later than the time of the development meetings, (7) distribution of the documents was accomplished through the public taskforce website, which hosted downloadable copies of the Park and Zhou references, (8) the task force had a policy that input documents should be uploaded before development meetings “to ensure that [they are] available for review by other participants,” and (9) the task force meeting reports directed readers to the task force’s website, and (10) the Board found that the taskforce website had title-search functionality and that the Park and Zhou references had descriptive titles, thus enabling routine searching of those references by subject matter. More generally, the Board also found that the task force was prominent in the community, such that its activity was reported in a highly influential trade journal. The Board thus found that skilled artisans would have learned of the task force website by word of mouth or upon the endorsement of other prominent organizations, and would have been motivated to track the task force website to ensure that their products and services were consistent with the developing standards.

M&K’s arguments on appeal centered on the structure and search capabilities of the task force website. But against the wealth of evidence recited above, the Court found those arguments unpersuasive. The Court explained that “M&K’s argument emphasizing the lack of full-content-search capability on the JCT-VC website also misses the mark. A factor relevant to public accessibility is whether a repository indexes its documents or otherwise categorizes them by subject matter.” It was thus sufficient that the documents in question on the meeting pages of the task force website were effectively indexed by subject matter, that the website had title-search functionality, and that Park and Zhou featured descriptive titles.

This case highlights the fact that public accessibility is highly fact-dependent. A party seeking to prove the public accessibility of a printed publication should advance as many supporting facts as possible in its petition. If the Board is convinced, it will likely be affirmed on appeal given the substantial-evidence standard of review.

The Board cannot find a claim to have been anticipated if the petition advances only an obviousness ground.

M&K’s second argument on appeal is that the Board committed procedural error when it held claim 3 unpatentable based on anticipation when Samsung’s petition challenged claim 3 only on a theory of obviousness. M&K argued that the Board’s reliance on anticipation deprived it of the notice it was due with respect to the ground on which the Board held claim 3 unpatentable. Samsung argued, in response, by framing the Board’s analysis as a simpler path to invalidating claim 3, and that the anticipation result was inherent in Samsung’s obviousness theory because a reference that anticipates a claim also renders that claim obvious. Samsung argued that M&K was on notice of the prior art the Board used to invalidate claim 3, and therefore was not denied notice of the ground on which the Board held that claim unpatentable.

The Court agreed with M&K. It observed that “[i]n a formal adjudication, such as an inter partes review, the Administrative Procedure Act (“APA”) imposes particular procedural requirements on the Board.” To comply, the Court said, “[t]he 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.’” The key question, according to the Court, is whether “the Board departed markedly from the evidence and theories presented by the petition or institution decision, creating unfair surprise.” After reviewing the facts, the Court found the Board’s anticipation result to be inconsistent with Samsung’s own arguments, and thus a marked departure from Samsung’s petition to which M&K did not have the opportunity to respond. 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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