Koninklijke Philips N.V. v. Google LLC et al., Appeal No. 2019-1177 (Fed. Cir., January 30, 2020).

Google filed an IPR against Philips’ patent relating to a method of forming a media presentation on a client device from multiple related files. Google’s IPR petition presented two grounds of unpatentability (anticipation and obviousness) based upon the SMIL 1.0 reference supported by general knowledge in the art regarding distributed media presentations, referred to as pipelining. The general knowledge in the art was supported an expert declaration and the Hua reference, although Hua was not made part of a combination with SMIL 1.0 by Google.

The PTAB instituted on both of Google’s grounds, and a third ground developed by the PTAB, namely SMIL 1.0 in view of Hua. Following the trial, the PTAB determined that the patent was not anticipated, but was obvious over SMIL 1.0 (Google ground) and SMIL 1.0 in view of Hua (PTAB ground). Philips appealed.

First, the Federal Circuit ruled that the PTAB erred in advancing a ground (SMIL 1.0 in view of Hua) that was not set forth in Google’s IPR petition. Turning to Google’s obviousness ground (SMIL 1.0 and general knowledge supported by Hua), the Federal Circuit determined that the PTAB “relied upon an expert declaration, which was corroborated by Hua, in concluding that pipelining was not only in the prior art, but also within the general knowledge of the skilled artisan.” Slip op. at 13. The Federal Circuit further noted that Philips offered no evidence to rebut Google’s position that the skilled artisan knew about pipelining. The PTAB’s obviousness judgment based on Google’s obviousness ground was affirmed.