Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in M&K Holdings, Inc. v. Samsung Electronics Co., Ltd., 20-1160 (Feb. 1, 2021).
Samsung filed a petition for inter partes review (“IPR”) asking the Patent Trial and Appeal Board to find unpatentable all claims of M&K’s patent directed to a method for compressing video files. Samsung asserted claims 1, 5, and 6 were anticipated by a reference known as “WD4-v3;” claim 2 was anticipated by WD4-v3 and obvious in view of WD4-v3 and a paper by Park; and claims 3 and 4 were obvious in view of WD4-v3, Park, and a paper by Zhou. All three references were uploaded to the website of the Joint Collaborative Team on Video Coding (“JCT-VC”), which is a task force consisting of representatives from technology companies, universities, and research institutions, before the priority date of the patent. In the IPR, M&K took issue only with whether the references constituted printed publications under 35 U.S.C. § 102. M&K contended they were not publicly accessible. The Board disagreed. The Board ruled claim 4 was obvious in view of WD4-v3, Park, and Zhou and all other claims were anticipated by WD4-v3. M&K appealed.
On appeal, M&K asserted the Board erred in concluding that Park and Zhou qualify as printed publications because a person of ordinary skill, exercising reasonable diligence, could not have located them. The Federal Circuit disagreed, concluding substantial evidence supported the Board’s determination. The Court explained that M&K’s focus on “prominence” of the references was misplaced because the “relevant inquiry is whether the channel through which the references were publicized is prominent . . . .” The Court also explained that the lack of full text search functionality on JCT-VC’s website does not mean a reference hosted thereon was not publicly accessible. The Court thus affirmed the Board’s unpatentability determination as to claims 1-2 and 4-6.
M&K also argued the Board committed procedural error in holding claim 3 unpatentable as anticipated when Samsung’s petition had asserted only that the claim was obvious. The Court concluded the Board’s holding as to claim 3 violated the procedural requirements of the Administrative Procedure Act in that M&K did not have notice and an opportunity to challenge the Board’s interpretation of the relevant claim element of claim 3. Accordingly, the Court vacated the Board’s decision as to claim 3 and remanded for further proceedings.