Samsung v. InfoBridge (Fed. Cir. 2019)
In the inter partes review (IPR), the Patent Trial & Appeal Board (PTAB) sided with the patentee Infobridge — concluding that the purported prior art was not sufficiently publicly accessible prior to the patent’s November 7, 2011 filing date (and therefore not prior art). On appeal, the Federal Circuit has rejected that decision — holding that the PTAB “applied the wrong legal standard in assessing public accessibility.”
The reference at issue is “Working Draft 4 of the H.265 standard” (WD4) which was developed by an MPEG group known as the Joint Collaborative Team on Video Coding (“JCT-VC”). The information included int he reference was discussed at a July 2011 meeting in Torino that included about 250 participants including both academics and corporate representatives. WD4 then written and uploaded to the JCT-VC website on October 4, 2011 as one of hundreds of documents listed on the Torino meeting sub-page. The documents are in no apparent order and when printed run 48 pages long. (The relevant page is listed below, can you find our reference of interest?).
WD4 was also uploaded to an MPEG website on October 4, 2011, but required a password to access. Also, the same day the WD4 lead author posted a link to the document to a listserve that included JCT-VC members and other interested individuals.
A publication must be either actually distributed or else made publicly accessible. Courts ask “whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference.” If so, then it is a publication.
Level of Access: In its decision, the Board found no evidence to show that “WD4 was accessible to anyone other than members of JCT-VC” because the websites were too complicated and unorganized. Regarding the listserve, the Board found that the “other interested individuals” testimony to lack credibility and found it “nothing more than conjecture and speculation.” The board – in essence – found no evidence that the WD4 document “was generally disseminated to persons interested and ordinarily skilled in the art.” As such, the Board held that the reference should not be considered prior art as of its 2011 date.
Distribution within the Group: Samsung argued that the JCT-VC group should be considered analogous to an academic conference and that distribution within the group should count as publication. “JCT-VC was composed of more than 250 members who were skilled artisans” in the relevant video coding art. On appeal though the Federal Circuit rejected this argument — holding that publication requires distribution beyond the creators of the document. ” [A] work is not publicly accessible if the only people who know how to find it are the ones who created it” — even if those people are a loose standard setting organization of 250 global experts.
Email Listserv Distribution: The patent challenger was able to gain traction with its listserv argument by showing public accessibility.
The Board departed from this well-established principle by repeatedly faulting Samsung for not proving that the WD4 reference was “generally” or “widely” disseminated. …[A] limited distribution can make a work publicly accessible under certain circumstances. But the Board’s analysis stopped short of considering whether those circumstances were present here. The Board also faulted Samsung for failing to show that the email recipients “represented a significant portion of those interested and skilled in the art.” That was not Samsung’s burden. The Board’s decision to reject Samsung’s evidence because it did not establish that enough interested and ordinarily skilled artisans actually obtained the WD4 reference was therefore erroneous.
Rather than requiring Samsung to prove that persons of ordinary skill actually received the listserv email, the Board should have considered 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. This might include examining whether a person of ordinary skill, exercising reasonable diligence, would have joined the listserv. It also might include considering the circumstances of the email itself, for example why the email was sent and whether it was covered by an expectation of confidentiality. Because the record is not clear on these factual questions, we decline to resolve them in the first instance on appeal. In particular, we are reluctant to assume that an email among potential collaborators should be treated the same as a public disclosure without clear findings by the Board. Accordingly, we vacate the Board’s finding that Mr. Bross’s email did not make the WD4 reference publicly accessible and remand so that the Board can consider this issue after applying the correct legal standard.
On remand, the PTAB will reconsider these issues — and likely find again that the listserv distribution was not sufficiently public.
“On remand, the PTAB will reconsider these issues — and likely find again that the listserv distribution was not sufficiently public.”
Hmm. The requisite level of skill for people to follow an HEVC-related disclosure is pretty high, and it’s a reasonable bet that the 250 people involved with that meeting represent a substantial fraction of all that actually exist, when you consider that the corporate representatives are reporting back to subject matter experts in their respective companies. I think it’s quite reasonable to believe that any person with a serious interest in the field (most likely work at one of these corporations) would know how and where to find the most up-to-date developments, and would almost certainly zoom in on a document titled “Working Draft 4 of High Efficiency Video Coding.”
whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference
That standard is met whenever there is a distribution of data in a permanent form that is not subject to a secrecy obligation. You mind as well apply standard (legal) discovery nomenclature at that point.
It naturally follows then that
[the CAFC] holding that publication requires distribution beyond the creators of the document. ” [A] work is not publicly accessible if the only people who know how to find it are the ones who created it”
is intrinsically wrong, if for no other reason that the entire industry could get together (which would be the height of something a hypothetical POSITA would know) and generate a document which would apparently never be prior art.
It… is intrinsically wrong… that the entire industry could get together… and generate a document which would apparently never be prior art.
I take it that you regard this as a reductio ad absurdum, but the end point to which the hypo is reduced is not really all that absurd. Consider some of the smaller fields of molecular biology (e.g., macroscopic virology), where there are only ~15 researchers in the whole field. Imagine that all the macroscopic virologists in the world got together at a conference and jointly conceived of an invention that builds upon all of their respective conference abstracts. If they file on it by the end of the conference without telling anyone outside the conference, then you have an application with fifteen inventors—hardly an unheard of number. Why is this “intrinsically wrong”? Where in this is the violation of the essential logic of a patent system?
Well, Greg, if all 15 conference participants were not only inventors but also joint owners of the subject matter, that might be imaginable. But what if one or more of them has an employer or sponsor with investment in what they happen to conceive? I would think that any such employer or sponsor would not be happy at all about any “joint conception” and “joint filing” activity. Might even consider such acts to be in breach of contract, and so actionable. In the USA, when you prepare a patent application for filing, do you not discuss ownership of the invention, already before you file?
Well, Greg,… what if one or more of the[ 15 conference participants] has an employer or sponsor with investment in what they happen to conceive? I would think that any such employer or sponsor would not be happy at all about any “joint conception” and “joint filing” activity.
Too true. This happens all the time, and it tends to be a real headache.
Might even consider such acts to be in breach of contract, and so actionable.
Naturally, this would depend on the exact terms of the contract, but it is certainly possible. Not likely, in view of the sorts of actual terms that appear in most employment agreements, but certainly possible.
In the USA, when you prepare a patent application for filing, do you not discuss ownership of the invention, already before you file?
I know that I end up discussing it quite a lot. I cannot speak to how often this issue presents to others of my U.S. colleagues.
This reminds me, in an offhand manner, of discussion that I had with the late Ned Heller following the Stanford v. Roche case (and the intersection of various state laws vis a vis ownership).
As ownership issues (including contract law, but also estate law) can quickly become a tangled mess given their natural State by State wrinkles, the fact that such wrinkles may well exist makes the topic all the more interesting.
Exactly. The patents court in England faced this situation in the case of Dalrymple. The disclosure was in a circular sent to all members of the relevant Trade Association but marked “Confidential”. Here a Link:
link to watermark.silverchair.com
Here the relevant words from the Decision:
“Above all there is the fact that the Bulletin has been so widely distributed as to bring its contents to the notice of a very substantial proportion of the interested public. I cannot regard the disclosure in these circumstances as “confidential” and accordingly I must hold that the
information contained in the Bulletin has been made available to the public”
Perhaps this is just nitpicking, but I think that it is worthwhile to maintain a distinction here between a communication among a lot of people in which all of them are listed as inventors on the patent application, and a communication among a lot of people in which only some are listed as inventors. If the inventive team on an application eventually filed is 3000 people large, then an e-mail blast among those 3000 before the filing date is not prior art (unless, perhaps, one or more of those 3000 forward the e-mail along to some non-inventor before the filing date). That is true even if none of those 3000 are under a duty of confidentiality.
How the F are you an Examiner?
“How the F are you an Examiner?”
You do know that this particular issue happens in like 1 in a million cases right?
It’s not just one issue 6, but nearly EVERY view that Random advances exhibits such a bizarrely twisted anti-patent streak. It’s as if he has gone out of his way and has continuously sought affirmation of his biases so much that he can no longer tell the difference between the Kool Aid and reality.
“That standard is met whenever there is a distribution of data in a permanent form that is not subject to a secrecy obligation.”
LOL. I think you just took the “reasonable” right out of “reasonable diligence.” Ignoring inconvenient words is a pretty common examiner trick.
Classic instance where the invention is information-only, non-obvious, novel, but yet easily within the skill of PHOSITA to devise and using nothing non-conventional. In my scheme, this is an eligible invention. Humans do not directly consume MPEG encoding.
Your “direct consumption” remains untethered to actual patent law.
Traffic lights provide information for direct consumption.
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