Board correctly determined references on website were publicly accessible; improper change of grounds vacated and remanded

M&K Holdings, Inc. v. Samsung Electronics Co., Ltd.

Docket No. 2020-1160 (IPR2018-00696) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1160.OPINION.2-1-2021_1726200.pdf)

MOORE, BRYSON, CHEN

February 1, 2021

Brief Summary:  Board public accessibility finding affirmed; anticipation determination vacated and remanded for improper change in grounds from obviousness. Summary:  M&K appealed IPR final written decision (FWD) finding all claims of US 9,113,163 directed to methods for compressing video files.  M&K unsuccessfully argued to the Board that “none of the three references” used in Samsung’s arguments (WD4-v3, Park and Zhou) “were publicly accessibly, i.e., that interested parties could not have accessed any of those references by exercising reasonable diligence” before the critical date (Dec. 13, 2011).  The Board disagreed because “those references were discussed at JCT-VC meetings and were posted to the organizations’ public website” (JCT-VC being “a prominent standards-setting organization”).  In this appeal, M&K argued “that a person of ordinary skill could not have located the Park and Zhou references by exercising reasonable diligence”.  The FC panel explained that “[a] reference will be considered publicly accessibly if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it” (Blue Calypso, FC 2016; Kyocera, FC 2008; In re Klopfenstein, FC 2004 (conference, trade show, group meeting); Acceleration Bay, FC 2018; SRI Int., FC 2008 (internet, brick-and-mortar location such as a library); MIT, FC 1985 (conference with attendees, copies made available without restriction)).  The Board found that the Park and Zhou references were presented at the JCT-VC meetings that “were attended by between 200 and 300 interested persons and that the conferees had discussed Park and Zhou at the meetings”, “meeting reports summarized the Park and Zhou discussions…without any expectation of confidentiality”, at least one trade journal cited the report, and skilled artisans “would have been motivated to track the JCT-VC website”, based in part on expert testimony.  The FC panel disagreed with M&K’s argument “that although the record established the prominence of JCT-VS’s working-draft documents, it did not show that input documents such as Park and Zhou were equally prominent” because “[t]he 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” (Samsung v. Infobridge, FC 2019 (“no requirement to show that particular members of the public actually received the information”); Voter Verified, FC 2012) and “the JCT-VC organization as a whole was prominent among the community of skilled artisans” (Board conclusion supported by substantial evidence).  The FC panel agreed with M&K that the Board relied on anticipation grounds rather than obviousness relied on for institution of the IPR (EmeraChem, FC 2017; unlike Wasica, FC 2017), and vacated that part of the decision.

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

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