Processing All Things Federal Circuit
February 08, 2021 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (February 1-5): The Growing Universe of Printed Publications

Last Week in the Federal Circuit (February 1-5): The Growing Universe of Printed Publications

Since yesterday was the Super Bowl, we assume that all of our readers spent today as we did, thinking about the Federal Circuit's recent decision in M&K Holdings about a video compression patent. If not, we've got you covered.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 3

Non-precedential opinions: 9

Rule 36: 9

Longest pending case from argument:  Tie between P.K. Management Group, Inc. v. HUD, No. 20-1260 and Nika Technologies, Inc. v. US, No. 20-1924 (57 days)

Shortest pending case from argument (non-Rule 36):Trustees of Columbia Univ. v. Illumina, Inc., No. 19-2302 (25 days)

Case of the week: M&K Holdings, Inc. v. Samsung Electronics Co., LTD., No. 20-1160. 

Panel:  Judges Moore, Bryson, and Chen, with Judge Bryson writing the opinion

You should read this case if:  you have a matter involving a challenge to whether a reference qualifies as a prior art printed publication

Congress limited inter partes review invalidity challenges to anticipation and obviousness based only on “patents or printed publications.”  So determining what is a printed publication can be paramount.  While journal articles are usually an easy call, other content often falls in a grey zone.  Our case this week illustrates how documents posted online by an industry standards working group can qualify as printed publications. 

M&K owns a patent to a method for compressing video files.  In an IPR brought by Samsung, the Patent Trial and Appeal Board held one claim invalid based in part on two prior art references, Park and Zhou.  Those references came from a joint task force that establishes industry standards for video coding.  The task force’s members submitted Park and Zhou and discussed them at the organization’s quarterly meeting.  200-300 interested persons typically attended those meetings.  The references were also uploaded to the task force’s public website.  

On appeal, the Federal Circuit explained that whether a reference is a printed publication requires “a case-by-case inquiry into the circumstances under which the reference was disclosed to the public.”  Although the ultimate question was legal, the “key inquiry” was the factual question whether the reference was publicly accessible at the relevant time.  The Court held that substantial evidence supported the Board’s finding of public accessibility, which was enough to affirm.

The Court viewed the case as falling in the overlap of two lines of precedent, one addressing references presented orally at conferences, the other involving publications available in repositories, like the internet or a library.  Like past conference material found to be publicly accessible, Park and Zhou were presented to hundreds of conference participants, the meeting reports summarized the discussion of those references, and meeting participants had no expectation of confidentiality.  And like past repository material, full copies of Park and Zhou were hosted on a public website where routine searching was likely to find them.  The Court also relied on the Board’s finding that the task force “was prominent in the community of those skilled in video-coding technology.”  That prominence increased the likelihood that skilled artisans interested in the references’ subject matter could have located them with reasonable diligence.

The Federal Circuit rejected M&K’s contrary arguments.  M&K argued that no evidence showed the Park and Zhou references themselves were prominent in the community.  The Court held that it was enough that the channel through which the references were publicized, i.e., the task force itself, was prominent or well-known among persons of ordinary skill in the art.  

M&K also argued against public accessibility because the task force’s website was difficult to navigate and allowed searching only by title rather than document content.  The Federal Circuit rejected that argument, too.  It emphasized that searchability is merely one factor in the analysis.  Even so, it held that the Board could reasonably find that searching by title supported the public accessibility of Park and Zhou because those documents had titles describing their content. The Court disagreed that another recent case affirming a Board finding that similar documents were not publicly accessibly required a different conclusion. The challenger had developed a better record in M&K.  And under the deferential substantial evidence standard, the Court could not say it was unreasonable for the Board to find public accessibility even if it also would have been reasonable to find no public accessibility.