985 F.3d 1376
Fed. Cir.2021Background
- The ’163 patent claims methods for decoding inter-predicted video using motion-vector candidate lists and selecting temporal motion-vector predictors.
- Samsung petitioned for inter partes review (IPR) asserting WD4-v3 anticipates claims 1,2,5,6 and that combinations of WD4-v3 with Park and Zhou render claims 2–4 obvious; the Board instituted on those grounds.
- WD4-v3 (working draft) and the input documents Park and Zhou were posted to the JCT-VC standards-development website before the patent priority date; JCT-VC held public development meetings where these documents were discussed.
- M&K challenged only the public-accessibility (i.e., printed-publication) status of Park and Zhou; it did not dispute WD4-v3’s accessibility or the substance of Samsung’s technical assertions.
- The PTAB found WD4-v3, Park, and Zhou publicly accessible and held all claims unpatentable; it treated claim 3 as anticipated by WD4-v3 even though Samsung had challenged claim 3 only as obvious.
- The Federal Circuit affirmed the Board’s printed-publication determinations for Park and Zhou but vacated and remanded the Board’s anticipation-based invalidation of claim 3 for lack of notice.
Issues
| Issue | M&K's Argument | Samsung's Argument | Held |
|---|---|---|---|
| Whether Park and Zhou are "printed publications" (publicly accessible) under 35 U.S.C. §102 | JCT-VC input documents were not publicly accessible; skilled artisans could not locate Park and Zhou with reasonable diligence | JCT-VC meetings, public website hosting, title-search functionality, community prominence made the documents publicly accessible | Affirmed: substantial evidence supports public accessibility through JCT-VC meeting disclosures + website/title searches |
| Whether the PTAB violated procedural notice requirements by invalidating claim 3 based on anticipation when petitioner alleged only obviousness | Board deprived M&K of APA notice by adopting an anticipation theory not pled by Samsung; M&K lacked opportunity to address that theory | The underlying prior art (WD4-v3) was before M&K and an anticipation-based pathway is inherent in Samsung’s challenge | Vacated and remanded: Board impermissibly departed from petition’s theories by holding claim 3 anticipated without adequate notice |
Key Cases Cited
- Jazz Pharms., Inc. v. Amneal Pharms., Inc., 895 F.3d 1347 (Fed. Cir.) (printed-publication is legal conclusion relying on underlying factual findings)
- GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir.) (substantial-evidence review of PTAB factual findings)
- In re Klopfenstein, 380 F.3d 1345 (Fed. Cir.) (public accessibility is the touchstone for printed-publication status)
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir.) (printed-publication when accessible to interested persons exercising reasonable diligence)
- Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340 (Fed. Cir.) (defining public accessibility standard)
- Mass. Inst. of Tech. v. AB Fortia, 774 F.2d 1104 (Fed. Cir.) (overlap of conference presentation and subsequent document distribution supports public accessibility)
- Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363 (Fed. Cir.) (prominent forum + title-search example in printed-publication context)
- In re Lister, 583 F.3d 1307 (Fed. Cir.) (descriptive titles and title-searchability can support public accessibility)
- EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341 (Fed. Cir.) (APA notice requirements in PTAB proceedings)