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

United States Court of Appeals, Federal Circuit

July 12, 2019


          Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017-00099, IPR2017-00100.

          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.

          Before Newman, Schall, and O'Malley, Circuit Judges.

          O'Malley, Circuit Judge.

         In two 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.

         I. Background

         A. The Technology

         The '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").

         B. The Prior Art

         The 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 Decision").[1]

         The key 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.

         1. JCT-VC Meetings

         JCT-VC 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.

         2. JCT-VC and MPEG Websites

         During 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. 7080.

         The WD4 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.

         3. JCT-VC Listserv

         On 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 at *9.

         C. The Board's Decisions

         Samsung 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.

         As to 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.").

         The 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 ...

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