Mixed Result in M&K Holdings v. Samsung Electronics: Federal Circuit Finds Anticipation not Necessarily Inherent in Obviousness Theory

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Earlier this month, in the precedential decision M & K Holdings v. Samsung Electronics Co., the Court of Appeals for the Federal Circuit (“the CAFC”) upheld the Patent Trial and Appeal Board (“the Board”) in finding certain references qualified as printed publications. However, the CAFC found the Board erred in finding that a challenged claim anticipated when the petition for inter partes review (“IPR”) asserted only obviousness.

In 2018, Samsung filed a petition for IPR on certain claims of US Patent No. 9,113,163 (“the ’163 patent”). The ’163 patent is directed to an efficient method for compressing video files, with claims covering methods for constructing a “motion vector candidate list,” selecting a candidate from that list, and making an optimal motion prediction for a current block.

The Board found all claims of the ’163 patent unpatentable. In its conclusions, the Board found three disputed references (“WD4-v3,” “Park,” and “Zhou”) were publicly accessible before the ’163 patent’s priority date, and the Board held claim 3 was anticipated by one of Samsung’s cited references, although Samsung’s petition had not asserted claim 3 was anticipated. M&K subsequently appealed.

M&K based its appeal on the grounds that the Board erred in:

  1. Finding Park and Zhou qualified as printed publications, and
  2. Holding claim 3 unpatentable for anticipation.

1) Did the Board Err by Finding Park and Zhou Qualified as Printed Publications?

In its first contention, M&K specifically argued that the Board erred in finding Park and Zhou qualified as printed publications because a person of ordinary skill exercising reasonable diligence in the art could not have located the references. The CAFC seemed to agree with M&K’s statement of the pertinent inquiry, but also noted that “whether a reference is a ‘printed publication’ under 102 involves a case-by-case inquiry into the circumstances under which the reference was disclosed to the public.”

In this case, the Board found Park and Zhou were presented at development meetings attended by 200 to 300 interested persons with no expectation of confidentiality. Additionally, the Board also found that, no later than the meetings, full copies of Park and Zhou were made available to interested persons. M&K contended the references were not displayed prominently, but the CAFC called this contention a misunderstanding – “the relevant inquiry is whether the channel through which the references were publicized is prominent or well-known among persons of ordinary skill in the art.” M&K also contended that the website where the Park and Zhou references were made available did not have full search functionality, but the CAFC rejected this argument as well, upholding the Board’s finding that the website was effectively indexed by subject matter and had title search functionality.

Ultimately, the CAFC rejected the remainder of M&K’s arguments and concluded that substantial evidence supported the Board’s finding that Park and Zhou qualified as printed publications.

2) Did the Board Err by Holding Claim 3 Unpatentable for Anticipation?

In its second contention, M&K specifically argued that the Board’s reliance on anticipation in finding claim 3 unpatentable (when Samsung’s IPR petition challenged claim 3 only on obviousness grounds) deprived M&K of proper notice. The CAFC began by pointing out that the Administrative Procedure Act (“APA”) imposes “particular procedural requirements on the Board,” and that the proper inquiry for the CAFC is if “the Board departed markedly from the evidence and theories presented by the petition or institution decision, creating unfair surprise.”

In this case, Samsung asserted claim 3 was rendered obvious by the combination of references WD4-v3, Park, and Zhou, but Samsung did not assert anticipation at any point. Indeed, in Samsung’s petition, it admitted (albeit, indirectly) that WD4-v3 did not disclose an element of claim 3.

M&K argued the Board based its decision on an interpretation of claim 3 not offered by either party and not disclosed until the Board’s decision. Samsung countered that essentially, the Board’s analysis was inherent in the obviousness theory because a reference that anticipates a claim also renders that claim obvious.

The CAFC ultimately agreed with M&K because although M&K was aware of the prior art the Board used to invalidate claim 3, M&K was not put on notice that the Board might invalidate claim 3 on anticipation grounds. Further, the CAFC found that, rather than being inherent in Samsung’s obviousness theory, an anticipation finding was actually to the contrary. Therefore, the CAFC vacated and remanded with respect to the Board’s decision on claim 3.

A mixed result can offer lessons for petitioners and patent owners. For patent owners, this case reinforces the need to consider what a person of ordinary skill in the art might uncover through reasonable diligence, not what a website makes prominent or easily accessible. For petitioners, this case emphasizes the importance of providing proper notice, even when a theory may seem to have been disclosed inherently.

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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