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On February 1, 2021, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“the Board”) invalidation of a video compression patent challenged by Samsung Electronics Co. (“Samsung”).1 The Court examined two issues: (1) the rule that printed publications can only be relied on by the Board to invalidate patents if the documents are publicly accessible; and (2) whether it was procedural error for the Board to rely on an argument to invalidate a claim that was not in Samsung’s petition.2 For the first issue, M&K Holdings, Inc. (“M&K”) argued that two of the three documents Samsung relied on were inaccessible to video coders, but the Court disagreed, invalidating five of the patent’s six claims.3 For the second issue, the Court held that it was procedural error and remanded that claim to the Board.4
Samsung’s Petition
M&K owns U.S. Patent No. 9,113,163 (“the ’163 patent”), which teaches an efficient method for compressing video files.5 Specifically, the claims of the ’163 patent recite “a method of decoding a moving picture in inter prediction mode” in which “one or more reference pictures are used to estimate motion of current block” over the duration of the video.6
In 2018, Samsung filed a petition arguing that all of the ’163 patent’s claims were unpatentable. In particular, Samsung urged that:
Claims 1, 5, and 6 were anticipated by a reference known as “WD4-v3”7;
Claim 2 was both anticipated by WD4-v3 and obvious due to the combination of WD4-v3 and Park et al., Modifications of Temporal MV Memory Compression and Temporal MV Predictor (“Park”);8 and
Claims 3 and 4 are obvious by the combination of WD4-v3, Park, and Minhua Zhou, Non-CEP9: Modified H Position for Memory Bandwidth Reduction in TMVP Derivation (“Zhou”). 9
The Board instituted the inter partes review on all arguments raised.
The documents relied on by Samsung (WD4-v3, Park, and Zhou) were created in conjunction with the work of a task force to establish industry standards for high efficiency video coding (“HEVC”).10 The task force, comprised of technology companies, universities, and research institutions, held quarterly meetings where members offered “input documents” (e.g., Park and Zhou) suggesting alterations to the HEVC standards.11 If the task force agreed to these changes, they were compiled into the working-draft document, e.g., WD4-v3.12 All three documents were uploaded to the task force website before the priority date of the ’163 patent—December 13, 2011.13
The Board’s Finding
In response to Samsung’s petition, M&K argued that WD4-v3, Park, and Zhou did not qualify as printed publications under 35 U.S.C. § 102 because “interested persons of ordinary skill could not have accessed any of those references by exercising reasonable diligence.”14
The Board plainly disagreed, finding that the documents were presented and discussed at task force meetings attended by hundreds of individuals.15 These discussions were found to have no expectation of confidentiality and were further summarized in meeting reports.16 Additionally, input documents (like Park and Zhou) were made available for download on the task force’s public website by the time of meetings.17 The website further had a title-search function such that input document titles could be routinely searched.18 The Board also found that the task force was prominent in the HEVC community and upon formation, engaged the public in its call for new industry standards.19 A well-known trade journal at the time chronicled this endeavor and cited the task force’s first meeting report, a report which directed readers to the public website.20 The Board concluded that WD4-v3, Park, and Zhou were all publicly accessible before December 13, 2011, and thus all six claims of the ’163 patent were invalid.21 Specifically, claims 1, 2, 5, and 6 were found to be anticipated and claim 4 was rendered obvious.22 As for claim 3, the Board found it to be anticipated, rather than obvious, an argument not asserted by Samsung. 23
M&K’s Appeal
On appeal, M&K did not challenge that WD4-v3 was “publicly available and accessible” before the ’163 patent’s priority date. Rather, M&K maintained that Park and Zhou were not printed publications—i.e., not publicly available and accessible—and offered several arguments to support this theory:
The record before the Board did not reveal that input documents like Park and Zhou were equally prominent to the task force;24
The task force’s website demonstrated inaccessibility because the structure of the home page was difficult to navigate and had no search capability—instead users had to select a particular meeting from an “all meetings” link to view input documents, and further could only search by title, date, or number, as opposed to a document’s content;25
Access to Park was impaired because it was uploaded to the website after it was discussed at a meeting;26
Samsung presented no evidence that actual interested parties accessed Park and Zhou via the public website;27 and
During the meetings where Park and Zhou were discussed, presentations did not disclose substantive material relevant to the obviousness issues in the case, because the presentations were oral and limited to five minutes and two slides.28
M&K also appealed the Board’s ruling holding claim 3 invalid as anticipated as error because Samsung never advanced that argument below depriving M&K of the required notice with respect to the Board’s analysis.29
The Federal Circuit’s Ruling on Accessibility
The Federal Circuit affirmed the Board’s finding of public accessibility of Park and Zhou.30 The Court reasoned that persons of ordinary skill in the video coding community could have accessed Park and Zhou with reasonable diligence via the task force website, deeming them printed publications within the meaning of § 102.30
As a threshold matter, the Court explained that although proving the references themselves were “prominent” would establish public accessibility per se, this was not required.32 “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.”33 Contrary to M&K’s argument, the Board found that the task force as a whole was prominent among the community of skilled artisans,34 in turn supporting the Board’s finding that the Park and Zhou references were publicly accessible.35
On the question of the website’s search functionality, the Court held that public accessibility does not require a home page to have a search function.36 Instead, the Court accepted the Board’s thorough reasoning that, given the prominence of the task force, the relevant question is whether users of the website could have found Park and Zhou through reasonable diligence.37 The Court also found persuasive that an interested party perusing the website would realize documents were hosted under meeting pages and would have been able to effectively navigate to a specific meeting date.38 Further, the Court noted the lack of a content-search capability is insignificant because the Board found the documents in question were effectively indexed by subject matter due to the title-search function and descriptive titles of Park and Zhou.39
In addition to finding that Samsung was not required to prove that Park was uploaded before the relevant task force meeting40, the Court also held that Samsung did not need to demonstrate that any interested parties actually accessed Park or Zhou because there is no requirement to show that particular members of the public actually accessed the references.41
Finally, the Court held that Samsung was “not required to prove that oral presentations of Park and Zhou” disclosed substantive material relevant to the obviousness issues.42 The Court found that the discussions were supplemented by the publication of Park and Zhou online.43 The Court reiterated the Board’s finding that interested parties attending the meeting would have been likely to browse the website and gather more detailed disclosures.44
The Federal Circuit’s Ruling on Notice
The Federal Circuit held that when the Board ruled claim 3 invalid based on anticipation, even though Samsung only argued obviousness (WD4-v3, in combination with Park and Zhou), that constituted procedural error.45
M&K argued that it was not put on notice that the Board might invalidate claim 3 based on anticipation, depriving it of the chance to challenge this argument.46
Samsung argued that the Board’s analysis of claim 3 was intrinsic to its obviousness theory because the reference that anticipates a claim (WD4-v3) also renders the claim obvious.47 Thus, Samsung asserted M&K was apprised of the document used to invalidate claim 3.48
The Court agreed with M&K calling the Board’s action a violation of the Administrative Procedure Act.49 The Court was persuaded by a statement in the Board’s decision where the Board impermissibly reasoned that because Samsung had established anticipation in claims 1 and 2, it had also established that WD4-v3 anticipates claim 3 noting “anticipation is the epitome of obviousness.”50 The Court found that was a violation of the proper notice owed to patentees and remanded claim 3 for further proceedings.51