A Document Accessible to the Public May Qualify as a Prior Art Reference Even If the Document Was Not Accessed
Summary: Whether a reference is publicly accessible and, therefore, available as prior art depends on whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference. The question of accessibility may depend on a careful, case-by-case examination of how the particular reference was disseminated, to whom, for how long, and under what circumstances.
In Samsung Electronics Co. v. Infobridge Pte. Ltd., No. 2018-2007 (Fed. Cir. July 12, 2019), the U.S. Court of Appeals for the Federal Circuit considered whether a working draft for a High Efficiency Video Coding standard (“the H.265 standard”) was publicly accessible and, therefore, available as prior art against U.S. Patent No. 8,917,772 (“the ’772 patent”) owned by Infobridge Pte. Ltd. (“Infobridge”). The ’772 patent “generally relates to encoding and decoding video data” and involves methods essential to the H.265 standard. Id. at 2.
Samsung Electronics Co. (“Samsung”) filed two inter partes review petitions challenging certain claims of the ’772 patent over prior art combinations including Working Draft 4 of the H.265 standard (“the WD4 reference”), which was developed by the Joint Collaborative Team on Video Coding (“JCT-VC”). Id. at 2, 4. The Patent Trial and Appeal Board (“the Board”) instituted review as to all challenged claims, but 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. Samsung appealed the Board’s decisions to the Federal Circuit, arguing that the WD4 did indeed qualify as publically accessible prior art. Id. at 6.
The Federal Circuit has held that the standard for public accessibility is whether an interested person of ordinary skill in the art could, after exercising reasonable diligence, access a reference. Id. at 18 (citing Jazz Pharms., Inc. v. Amneal Pharms., LLC, 895 F.3d 1347, 1355-56 (Fed. Cir. 2018); In re Lister, 583 F.3d 1307, 1314 (Fed. Cir. 2009); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988)). “[P]ublic accessibility requires more than technical accessibility.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018). For instance, the question of whether a reference was publicly accessible may depend on “a careful, case-by-case examination of how [the] particular reference was disseminated, to whom, for how long, and under what circumstances.” Samsung, slip op. at 9 (citing Jazz, 895 F.3d at 1357).
Samsung pointed to three examples of disclosures that it claimed established public accessibility of the WD4 reference. Id. at 3. First, Samsung argued the WD4 reference was publicly accessible because it was discussed at various JCT-VC meetings. Id. at 10-12. Specifically, some 250 members of the JCT-VC met to discuss the H.265 standard while still under development during a meeting in Torino, Italy. Id. at 3. The WD4 reference was discussed and ultimately approved at the next JCT-VC meeting in Geneva, Switzerland. Id. However, the WD4 reference was not created until after the Torino meeting and therefore could not have been circulated to conference attendees at the meeting itself, and the Geneva meeting occurred after the relevant critical date for the ’772 patent. Id. at 3, 11. Consequently, even if the disclosure at one of these meetings could establish public accessibility, the Federal Circuit concluded that neither meeting would establish that the WD4 reference could serve as prior art against the ’772 patent. Id. at 12.
Second, Samsung asserted the WD4 reference was publically accessible because it was uploaded to a JCT-VC website maintained to allow users to access various JCT-VC materials. Id. at 3, 10, 13-14. Samsung argued that this is akin to an academic presenting a paper at a conference. Id.
The Federal Circuit was not persuaded by Samsung’s analogy and found SRI International, Inc. v. Internet Security Systems, Inc., 511 F.3d 1186 (Fed. Cir. 2008) and Application of Bayer, 568 F.2d 1357, 1361 (CCPA 1978), to be instructive. Samsung, slip op. at 14. The court in SRI held that a reference emailed to the organizer of an upcoming symposium was not publically accessible because evidence suggested that the organizer was the only person outside of the research institute who knew about the availability of the reference. 511 F.3d at 1196-97. The court in Bayer found that a student thesis was not publically accessible because it was only accessible to members of a faculty review committee. 568 F.2d 1357, 1361 (CCPA 1978).
In Samsung, the Federal Circuit concluded the SRI and Bayer cases, taken together, suggest that a reference is not publicly accessible if the only people who know how to find the reference are the ones who created the reference. Samsung, slip op. at 14. In particular, the court concluded that “even a person who found the JCT-VC website lacked a reasonable way of locating the WD4 reference unless they already knew what to look for and where to look for it.” Id. at 16. Further, the court distinguished the members of the JCT-VC from mere conference attendees in other cases because the JCT-VC members were part of ongoing, collaborative efforts to draft the WD4 reference (similar to the research institute members in SRI and the faculty in Bayer). Id. at 14-15 (citing GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir. 2018); Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir. 2018)).
Third, Samsung argued the WD4 reference was publicly accessible because it was emailed to a JCT-VC listserv. Id. at 10, 17-20. In contrast to the website, the court was more receptive to the possibility that members of the JCT-VC listserv, who were not part of the JCT-VC member group, could have accessed the WD4 reference. Id. at 18. Here, the lead author of the WD4 reference emailed the reference to the JCT-VC listserv with a link to download the WD4 reference. Id. at 4, 17. The listserv included JCT-VC members who had attended the Torino meeting as well as other “interested individuals.” Id. (citations omitted). The Board viewed the email as a “limited distribution” to the JCT-VC member group and concluded there was insufficient evidence to establish public accessibility because it could not determine whether any other “interested individuals” represented “a significant portion of those interested and skilled in the art.” Id. at 18 (citations omitted).
Samsung argued that the Board erred by confusing access with accessibility. Id. The court agreed, concluding the Board erred by rejecting Samsung’s position on the basis that the evidence did not establish that enough interested and ordinarily skilled artisans actually obtained the WD4 reference. Id. at 19. Instead, the court stated the question the Board should have considered was “whether Samsung’s evidence established that an ordinarily skilled artisan could have accessed the WD4 reference, after exercising reasonable diligence, based on the listserv email.” Id. at 20 (emphasis added). The court declined to resolve this factual question and expressed reluctance to assume that an email among potential collaborators should be treated the same as a public disclosure without clear findings by the Board. Id. Accordingly, the court vacated the Board’s finding that emailing the WD4 reference to the JCT-VC listserv did not make the reference publicly accessible. Id. For possible consideration on remand, the court suggested examining whether a person of ordinary skill, exercising reasonable diligence, would have joined the listserv and whether the listserv was covered by an expectation of confidentiality. See id.
As Samsung illustrates, under certain circumstances a document that is accessible to the relevant public may qualify as a prior art reference even if the document was not actually accessed. Accordingly, parties wishing to avoid the creation of prior art should consider restricting the accessibility of materials that are not intended to be publicly available and maintaining appropriate confidentiality provisions.
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