Board IPR obviousness conclusion affirmed (cannot “ignore the skilled artisan’s knowledge”)

Koninklijke Philips N.V. v. Google, LLC, Microsoft Corp. et al.

Docket No. 2019-1177 (IPR2017-00447)
January 30, 2020

Brief Summary: Board IPR obviousness determination regarding Phillips’s claims affirmed (e.g., § 311(b) limitation on prior art does not mean one can “ignore the skilled artisan’s knowledge when determining” obviousness).

Summary: Philips appealed Board IPR decision finding claims 1-11 of US 7,529,806 relating to methods for providing multiple formats of a media presentation invalid for obviousness. The Board found the claims obvious over “SMIL 1.0” teaching a computer language including “a ‘switch’ element that specifies a set of alternative files from which only one should be chosen by a media player”, or SMIL 1.0 and the Hua reference (“a review [of] the convention pipelining scheme”, which “refers to dividing a media presentation into multiple segments”). Philips argued to the Board in its preliminary IPR response “that it was inappropriate for Google to rely on Hua as evidence of general knowledge but rather was required to make Hua ‘part of the combination’ and ‘explain[] how [Hua] would have been combined with SMIL 1.0”, and that Google cannot “rely on ‘conclusory statements of ‘general knowledge’ to supply a missing claim limitation”, but the Board disagreed in its obviousness determination. In this appeal, Philips argued the Board erred in relying on the combination of SMIL 1.0 and Hua because “Google did not advance that combination of prior art in its petition” and the FC panel agreed (citing Sirona Dental, FC 2018 and SAS, US 2018; distinguishing this case from Anacor (FC 2018) and Genzyme (FC 2016) (regarding invalidity arguments need not remain “precisely as formulated in the petition’ so long as the Board ‘provide[s] reasonable notice”, not “whether the Board has discretion to institute…on a ground of unpatentability not raised in the petitioner’s petition”)). Philips also argued “that the Board erred in relying on ‘general knowledge’ to supply a missing claim limitation” in its conclusion of obviousness over SMIL 1.0 because general knowledge is not “prior art consisting of patents or printed publications” and therefore prohibited from being used under § 311(b). The FC panel disagreed, however, since the § 311(b) limitation on prior art does not mean one can “ignore the skilled artisan’s knowledge when determining” obviousness (Dow Jones, FC 2010; Arendi, FC 2016 (“common sense and common knowledge” in IPR, but “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support” or be “based merely upon ‘conclusory statements and unspecified expert testimony”); Randall, FC 2013), and “Phillips offered no evidence to rebut the conclusion that a skilled artisan would have known about pipelining.” The FC panel also found substantial evidence supported the Board’s conclusion and no error in its “reliance on the ‘806 patent’s disclosure” since “it is appropriate to rely on admissions in a patent’s specification” (PharmaStem, FC 2007). The Board decision was therefore affirmed.

This entry was posted in Anticipation (35 USC 102), Inter Parties Review (IPR), IPR, Obviousness, Uncategorized. Bookmark the permalink.

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