Federal Circuit vacates and remands IPR decisions based on public accessibility

Samsung Electronics Co., Ltd. v. Infobridge PTE. Ltd.

Docket Nos. 2018-2007, -2012 (IPR2017-00099, -00100)
Newman, Schall, O’Malley
July 12, 2019

Brief Summary: Board IPR decisions based on no public accessibility vacated and remanded (e.g., “a petitioner need not establish that specific persons actually accessed or received a work to show” accessibility).

Summary: Samsung appealed two Board IPR decisions finding that it failed to show that the prior art cited against Infobridge’s US 8,917,772 related to encoding and decoding data was publicly accessible before the ‘772 patent critical date. The “WD4 reference” (Working Draft 4 of the H.265 standard), cited by Samsung in different combinations in each IPR, was developed by the Joint Collaborative Team on Video Coding (“JCT-VC”) at meetings and stored various materials on a website. The FC panel opinion explains that a user could access the WD4 reference by “follow[ing] at least four steps”: “navigate to the JCT-VC website”; “select a menu option to view information about ‘All meetings’ held by the JCT-VC”; “select ‘Torino’ from the list of available meeting options which were not identified by subject matter”; and then “select the WD4 reference” “from “a list of ‘hundreds’ of documents organized by an identifying number rather than subject matter”; or using a website maintained by a JCT-VC parent organization (MPEG) “arranged in a manner similar to the JCT-VC website”. Further, the WD4 reference was emailed “to a JCT-VC listserv” which “included JCT-VC members show had attended the Toronto meeting as well as other ‘interested individuals’”. The Board concluded Samsung presented “insufficient competent evidence” of public accessibility, finding the WD4 reference author’s testimony to be “‘conclusory and insufficiently factually supported’ because [h] could not testify about whether others would have navigated to the JCT-VC website to learn about developments in video coding” or the MPEG website, and “even if someone found the MPEG website, they would not have been able to reasonably find the WD4 reference.” The FC panel first considered whether Samsung had standing to appeal the decisions (raised by Samsung), which it explained “turns on its relationship to Infobridge and the ‘772 patent” (Phigenix, FC 2017 (standing must “apply at every stage of a case before a federal court, including on appeal”; Lujan, US 1992 (“‘concrete and particularized’ injury”)). The FC panel agreed with Samsung it has standing (e.g., Chou, “deprived of an interest in proceeds from licensing”). On public accessibility, the FC panel explained that accessibility “is the ‘touchstone’” and that “public accessibility requires more than technical accessibility” (Acceleration Bay, FC 2018 (affirmed as not publicly accessible as reference uploaded to university website was not “meaningfully indexed”); Voter Verified, FC 2012 (skilled artisan “could have reasonably found the website and then found the reference”)). The FC panel first agreed with the Board that the WD4 reference was neither publicly accessible based on its distribution at the JCT-VC meetings (waived certain arguments) nor from the JCT-VC and MPEG websites (e.g., “a work is not publicly accessible if the only people who know how to find it are the ones who created it” (SRI, FC 2008)). But the FC panel disagreed with the Board’s decision regarding public accessibility based on the JCT-VC listserv since “a petitioner need not establish that specific persons actually accessed or received a work to show” accessibility (Lister, FC 2009; Constant, FC 1988). The Board decision was therefore vacated and remanded.

This entry was posted in Anticipation (35 USC 102), Obviousness, Public Accessibility, Public Use. Bookmark the permalink.

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