Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2017-00099,
Stephen Blake Kinnaird, Paul Hastings LLP, Washington, DC,
argued for appellant. Also represented by Naveen Modi,
Quadeer Ahmed, Joseph Palys, Igor Victor Timofeyev, Michael
Wolfe, Daniel Zeilberger.
Michael Newman, Mintz, Levin, Cohn, Ferris, Glovsky and
Popeo, PC, Boston, MA, argued for appellee. Also represented
by William Meunier, Kongsik Kim, Michael Timothy Renaud.
Newman, Schall, and O'Malley, Circuit Judges.
O'Malley, Circuit Judge.
inter partes review proceedings requested by Samsung, the
Patent Trial and Appeal Board ("the Board") upheld
all challenged claims of U.S. Patent 8, 917, 772 ("the
'772 patent"), which is owned by Infobridge. The
Board upheld the claims because it found that Samsung failed
to show that a certain prior art reference was publicly
accessible before the '772 patent's critical date and
thus could not be considered prior art. Samsung appeals the
Board's decisions, insisting that it has standing to do
so and arguing, among other things, that the Board applied
the wrong legal standard in assessing public accessibility.
We agree with Samsung on both issues. We therefore vacate the
Board's decisions and remand for further consideration.
'772 Patent, titled "Method of Constructing Merge
List," generally relates to encoding and decoding video
data. Both parties agree for purposes of this appeal that the
patented methods are essential to the High Efficiency Video
Coding standard ("the H.265 standard").
sole prior art reference at issue on appeal is Working Draft
4 of the H.265 standard ("the WD4 reference"),
which was developed by the Joint Collaborative Team on Video
Coding ("JCT-VC"). Samsung Elecs. Co., Ltd v.
Info-bridge Pte. Ltd, IPR2017-00099, 2018 WL 1940480 at
*2 (P.T.A.B. April 23, 2018) ("Final Written
question here is whether the WD4 reference was publicly
accessible prior to the '772 patent's critical date.
Samsung points to three examples of disclosures that it
claims, independently or together, establish public
accessibility. Each are discussed below.
members met to discuss the H.265 standard, then under
development, during a July 2011 meeting in Torino, Italy
("the Torino meeting"). This meeting included about
250 participants, ranging from academics to representatives
from various technology companies. One of the "primary
goals" for the Torino meeting was developing the WD4
reference. J.A. 5327. In November 2011, at the next JCT-VC
meeting in Geneva, Switzerland ("the Geneva
meeting"), the WD4 reference was discussed and
ultimately "approved." J.A. 5587.
JCT-VC and MPEG Websites
this same time, the JCT-VC maintained a website allowing
users to access various JCT-VC materials. The WD4 reference
was uploaded to the JCT-VC's website on October 4, 2011.
Final Written Decision, 2018 WL 1940480 at *5. To
access the WD4 reference, users needed to follow at least
four steps. First, they had to navigate to the JCT-VC
website. J.A. 7026. Next, they had to select a menu option to
view information about "All meetings" held by the
JCT-VC. J.A. 7029. Then a user would need to select
"Torino" from the list of available meeting
options, which were not identified by subject matter.
Id. At this point, the user would see a list of
"hundreds" of documents organized by an identifying
number rather than subject matter. Final Written
Decision, 2018 WL 1940480 at *4; see also J.A.
7034-7081 (listing the documents). From this list, a user
would need to select the WD4 reference, titled "WD4:
Working Draft of High-Efficiency Video Coding." J.A.
reference was also uploaded to a website maintained by the
Moving Picture Expert Group ("MPEG"), a parent
organization of the JCT-VC, on October 4, 2011. Final
Written Decision, 2018 WL 1940480 at *2-3, *5. The MPEG
website was arranged in a manner similar to the JCT-VC
website, i.e., a user would need to navigate to the
relevant meeting and then select the relevant document.
Id. at *8-9. But, unlike the JCT-VC website, the
MPEG website required users to have a login and password to
access materials. Id. at *7.
October 4, 2011, the same day it was uploaded to the
Internet, Benjamin Bross-the lead author of the WD4
reference-emailed the reference to a JCT-VC listserv. J.A.
6377. According to Mr. Bross, the listserv included JCT-VC
members who had attended the Torino meeting as well as other
"interested individuals." J.A. 7947. Mr.
Bross's email included a download link for the WD4
reference. Final Written Decision, 2018 WL 1940480
filed two inter partes review petitions challenging claims
1-7 (IPR2017-00099) and claims 8-9 (IPR2017-00100) of the
'772 patent on October 17, 2016. The Board instituted as
to all challenged claims. In both proceedings, the
Board's institution decisions relied on prior art
combinations including the WD4 reference. In its final
written decisions, however, the Board concluded that the WD4
reference was not publicly accessible prior to the '772
patent's critical date and therefore could not be prior
art. Id. at *10.
the JCT-VC website, the Board concluded that there was
"insufficient competent evidence" to show that a
person of ordinary skill in the art "would [have]
know[n] to check the JCT-VC site for information of relevance
to the art." Id. at *5. Although Samsung
offered testimony from Mr. Bross on this point, the Board
rejected his testimony as "conclusory and insufficiently
factually supported" because Mr. Bross could not testify
about whether others would have navigated to the JCT-VC
website to learn about developments in video coding.
Id. at *6. The Board therefore found that Samsung
could not "establish that WD4 was accessible to anyone
other than members of JCT-VC" during the relevant time
period. Id. The Board went on to explain that,
assuming a person of ordinary skill might have known about
the JCT-VC website, there was no evidence that such a person
would have located the WD4 reference on the website by
exercising reasonable diligence. Id. at *7
("Although the JCT-VC site was organized in a
hierarchical manner, the evidence does not establish WD4 was
indexed in a manner that one ordinarily skilled in the art,
exercising reasonable diligence, could locate it.").
Board reached the same conclusion with respect to the MPEG
website for essentially the same reasons. Id. at
*7-9. For example, the Board again faulted Samsung for
offering only "conclusory and factually
unsupported" assertions that those skilled in the art
were aware of the MPEG website. Id. at *8. The Board
also found that, even if someone could have found the MPEG
website, they would not have been able to reasonably find the
WD4 reference. Id. ("[W]e also find Samsung has
failed to present evidence that a person interested and
skilled in the ...