February 12, 2021
On February 1, in M & K Holdings, Inc. v. Samsung Electronics Co., Ltd., the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision finding that references published online by a standard-setting organization were printed publications under 35 U.S.C § 102. This case provides insight regarding when a reference presented at a conference and published online is publicly accessible and, accordingly, constitutes a printed publication.
Samsung filed a petition for inter partes review (IPR) challenging M & K Holdings’ patent directed to an efficient method for compressing video files. The PTAB held all the claims unpatentable in a final written decision, and M & K appealed.
Samsung relied on three prior art references, two of which were at issue in the appeal: a paper by Park and one by Zhou. Park and Zhou were generated in connection with a joint task force established to create industry standards for the field of high-efficiency video coding (HEVC). The task force included representatives from technology companies, universities, and research institutions that met quarterly to propose changes to HEVC standards.
M & K argued that the references did not constitute printed publications under section 102 because interested persons of ordinary skill could not have accessed any of the references by exercising reasonable diligence. The PTAB disagreed, finding that the joint task force was a prominent standards-setting organization and that the references were discussed at task force meetings and published on the task force’s public website prior to the priority date of the challenged patent.
The Federal Circuit agreed the references were printed publications.
The Federal Circuit found a number of factors in combination favored a finding of public accessibility. First, the references were presented and discussed at task force development meetings attended by 200–300 interested persons without any expectation of confidentiality. Second, the references were made available at the time of the development meetings through the task force website to ensure the references were available for review by meeting participants. Third, the task force website had title-search functionality and the references had descriptive titles, enabling routine searching of those references by subject matter.
The court also found the prominence of the task force within the field of video-coding favored that the references were publicly accessible, even if the references themselves were not shown to be prominent in the field. In particular, the record supported that the task force website would have been known by skilled artisans in the field and that those artisans would have been motivated to keep track of the website to ensure that their products and services would be consistent with new HEVC standards.
Given the prominence of the task force in the field, the Federal Circuit agreed that users of the task force website could have found the Park and Zhou references exercising reasonable diligence, despite the website’s limited search capacity. In particular, to access task force documents, users had to click on a link titled “All meetings” and navigate to a particular meeting. Once a user navigated to a meeting, documents were not searchable by content but, rather, were searchable by date, title, and number. The Federal Circuit noted that to be publicly accessible, a website’s landing page is not required to have search functionality. Although the “All meetings” label did not expressly describe a document repository, the court agreed a skilled artisan who was browsing would understand the documents are hosted under meeting pages and would have known to navigate to the most recent meeting and to search backward in time until the user’s search was satisfied. Finally, although one factor relevant to public accessibility is whether a repository is indexed or categorized by subject matter, the PTAB found that the two references were effectively indexed by subject matter because the meeting pages provided title-search functionality and the references had descriptive titles.
It was also not necessary to show interested artisans actually discussed the subject matter pertinent to the challenged claims at task force meetings or accessed the references via the website in view of the PTAB’s finding that skilled artisans attending the meetings would have been motivated to visit the task force website to access the references to supplement the brief oral presentations of those papers.
In view of the above, the Federal Circuit affirmed the PTAB’s finding that the references were printed publications.
Separately, the Federal Circuit vacated the PTAB’s decision that one of the challenged claims was anticipated because Samsung only alleged that the claim was obvious in view of a combination of three references and admitted that one limitation of the claim was not disclosed by the sole reference found by the PTAB to anticipate the claim. This violated the Administrative Procedure Act’s notice requirement and accordingly required remand to the PTAB to address obviousness of the claim.
This decision is pertinent to parties involved in patentability disputes involving prior art published by an industry organization because it provides guidance regarding the question of public availability of papers presented in industry meetings and published online. In view of this decision, even if a reference is not prominent, the prominence of the channel through which the reference is publicized can weigh in favor of public accessibility. Additionally, even when a website is not searchable by content, title search capability may be sufficient to show public accessibility, since the relevant inquiry is whether interested users could have located the references through reasonable diligence.
For more information on this holding, please contact Fitch Even partner Paul B. Henkelmann.
Fitch Even associate Jacqueline L. Thompson contributed to this alert.
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