Patent Case Summaries - January 2020 #3

Alston & Bird

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.

Koninklijke Philips N.V. v. Google LLC, et al., No. 2019-1177 (Fed. Cir. (PTAB) Jan. 30, 2020). Opinion by Prost, joined by Newman and Moore.

Google filed a petition for IPR raising two grounds of unpatentability directed to claims concerning a method of forming media presentations. Specifically, Google asserted that the claims are anticipated by the “SMIL 1.0” reference, and also that the claims would have been obvious over SMIL 1.0 in light of the general knowledge of skilled artisans regarding “pipelining.” In support, Google relied on “Hua” as  evidence of general knowledge of pipelining.

The Patent Trial and Appeal Board instituted the IPR on three grounds—the two grounds raised by Google and, in the exercise of the Board’s discretion, a third ground directed to obviousness over the combination of SMIL 1.0 and Hua. The Board ultimately disagreed with Google on the issue of anticipation, but found the claims unpatentable on both obviousness grounds. Philips appealed.

On appeal, Philips argued that the Board erred by instituting review based on obviousness over the combination of SMIL 1.0 and Hua. The Federal Circuit agreed, holding “that the Board erred by instituting inter partes review based on a combination of prior art references not advanced in Google’s petition.” The Federal Circuit explained: “Although the Board is not limited by the exact language of the petition, the Board does not ‘enjoy a license to depart from the petition and institute a different inter partes review of his own design.’”

The Federal Circuit therefore focused on obviousness based on SMIL 1.0 and the general knowledge of skilled artisans. Addressing that ground, Philips argued that the Board erred in relying on “general knowledge” to supply a missing claim limitation. Philips reasoned that 35 U.S.C. § 311(b) expressly limits IPRs to “prior art consisting of patents or printed publications,” and “general knowledge” is neither of those. The Federal Circuit disagreed, emphasizing that “the obviousness inquiry turns not only on the prior art, but [also on] whether ‘the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious.’” The court ruled that the inquiry into these differences “necessarily depends on such artisan’s knowledge.”

On the merits, the Federal Circuit determined that the Board’s finding of unpatentability based on SMIL 1.0 and general knowledge was supported by substantial evidence. Thus, the Federal Circuit affirmed.

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