Federal Circuit: Anticipation not Inherent to Obviousness Argument

by Dennis Crouch

M&K Holdings, Inc. v. Samsung Electronics Co., LTD. (Fed. Cir. 2021)

M&K’s U.S. Patent No. 9,113,163 covers a “method of decoding moving picture.”  There is some history between Samsung and M&K’s family of companies, whose patents also originate in Korea.  This appeal stems from an IPR final written decision finding the challenged claims invalid.

Decide only the Issues Raised: The first bit here is easy but quirky.  The petition challenged claim 3 of the ‘163 patent as obvious. The PTAB found the claim unpatentable as anticipated, but did not perform an obviousness analysis.  On appeal, the Federal Circuit vacated — holding that the PTAB “deviated impermissibly from the invalidity theory set forth in Samsung’s petition.”  For its part, Samsung argued that the anticipation holding was no-problem. Just like the vast-majority-of-cases, the anticipation here is inherent in the obviousness theory.  In particular, we have the same prior art — its just that the PTAB only needed the primary reference.  In its petition, Samsung suggested a second reference showing the “predetermined block” claim limitation.

On appeal, the Federal Circuit found notice lacking since Samsung’s original petition stated that the primary reference did not disclose the “predetermined block.” According to the court, if M&K had known about the anticipation argument, it might have shifted its argument about the scope of claim 3.  The cynicism here is relevant – the Federal Circuit is recognizing and even encouraging parties to shift their patent claim meaning arguments depending upon the circumstances. This outcome can be linked with the court’s conclusion in Egenera, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2020). In that case, the court permitted the patentee to shift its arguments regarding claim meaning and patent scope as the case moved through various tribunals.

In the end, the difference here between anticipation & obviousness was sufficient enough for the court to find an APA violation by the PTAB in finding the claim anticipated.

Printed Publication: The patentee also challenged the decision by arguing that some of the references relied upon were not actually prior art. We have three references at issue that were all uploaded to a website controlled by the Joint Collaborative Team on Video Coding (“JCT-VC”):

  1. Bross et al., WD4: Working Draft 4 of High-Efficiency Video Coding, JCTVC-F803 (version 3) (uploaded Sept. 8, 2011).
  2. Park et al., Modifications of Temporal MV Memory Compression and Temporal MV Predictor, JCTVC-E059 (version 4) (uploaded Mar. 19, 2011).
  3. Zhou, Non-CEP9: Modified H Position for Memory Bandwidth Reduction in TMVP Derivation, JCTVC-G082 (version 1) (uploaded Nov. 9, 2011).

All three were uploaded to the server, and the patentee argued that a person of ordinary skill in the art could not have found Park or Zhou using reasonable diligence before the patentee’s priority date of December 13, 2011.  Here, the references were each discussed at a JCT-VC development meeting of ~200 people prior to that date, and those meetings were not subject to “any expectation of confidentiality.”  The documents were hosted in downloadable form, and could be searchable by title.  Further, JCT-VC was a “prominent” group within those skilled in video-coding technology and those outside the group would have found the website.   In reviewing the relevance of these facts, the Federal Circuit asked “whether the channel through which the references were publicized is prominent or well-known among persons of ordinary skill in the art.”  These facts came together to allow the Federal Circuit to affirm the “Board’s finding that persons of ordinary skill in video-coding technology could have accessed Park and Zhou with reasonable diligence through the JCT-VC organization. None of M&K’s arguments undermine the Board’s finding that Park and Zhou were publicly accessible and its conclusion that those references constitute printed publications within the meaning of 35 U.S.C. § 102.”

Note here that this decision is in some serious tension with Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363 (Fed. Cir. 2019) (Version 4 of the same working draft not prior art).  That decision involved a patent from the same inventor, Soo Mi Oh.

= = =

One oddity of this case is the priority dates.  The patent application at issue was actually filed in September of 2012 but claims priority back to two Korean applications filed in 2010 and early 2011 and then a PCT application filed in Korea on December 13, 2011.  The PCT application includes additional matter that is found in the claims. The patentee did not attempt to prove an earlier invention date.  So, the December 13, 2011 date was used as the critical-date for 102(a) prior art.

55 thoughts on “Federal Circuit: Anticipation not Inherent to Obviousness Argument

  1. 6

    Viewpoint open for discussion:

    The whole phrase “motivation to combine” should be more tightly construed.

    Some background:

    The ‘test’ is not “motivation.”
    The ‘test’ is not “to collect” (as in, pile on the the items – and typically ‘excused’ because the item in and of itself has a value).

    The ‘test’ is whether a Person Having Ordinary Skill In The Art (note: not an examiner, not an infringer) would be motivated a priori to make the combination.

    The driver:

    As evidenced by the shockingly held belief that 103 art is merely a conglomeration of 102 art (as if one could simply have 102 by collecting the individual items of 103 and stapling them together into a new single reference), and the lack of the good professor to take the opportunity of the teaching moment and explain why such is so, perhaps it is time to push back (and push back hard) on the multiple various elements that provide the legal distinguishment between 35 USC 102 and 35 USC 103.

    1. 6.1

      Agreed. 100%. How though? Just adopt , lock, stock and barrel the TSM approach of the EPO, where the test is not just “could have combined” but “would have combined”, a much more demanding requirement.

      And then there is the role of the “technical problem” at the EPO. It sets the environment in which the question is posed, to identify with laser specificity the attributes of the skilled person.

      Only a suggestion, though. No disrespect of Sovereign USA.

      1. 6.1.1

        I hear your suggestions, and applaud your approach here – but with the single caveat that one need not bow to “technical” or conflate any type of “laser specificity” based on the (mistaken) view that laser specificity somehow cannot be obtained outside of “technical” and within the US Sovereign’s choice of the larger Useful Arts.

        The logical fallacy induced is a false selection of the coupling of “technical” with the separate issue that I put forth in post 6.


          Not at all. I disagree. Sooner or later, one way or the other, one has to distinguish between contributions to “the art” that are within the ambit of “the useful arts”, and those that are not. Otherwise, new, creative, non-obvious and clever contributions to, say, the fine arts, or the literary arts, or the musical arts become patentable.

          The EPO does the filtering under its obviousness enquiry, as it toggles between technical features (s claimed) and technical effects (as achieved).

          The USA and the UK do it (more arm-wavingly and less satisfyingly) under the rubric of their eligibility enquiry.

          As the saying goes, You pays yr money and you makes yr choice.

          But the choice has to be made, one way or the other


            Your reply (and disagreement) misses — and not by a little.

            Put as simple as possible, the choice of each Sovereign has zero to do with each other and your attempted conflation of one Sovereign’s choice with that of another.

            Useful Arts remains a larger choice than “technical arts,” and no matter how much you may not like that, your feelings are simply immaterial.

  2. 5

    The PTAB found the claim unpatentable as anticipated, but did not perform an obviousness analysis. On appeal, the Federal Circuit vacated — holding that the PTAB “deviated impermissibly from the invalidity theory set forth in Samsung’s petition.”

    Typical CAFC not thinking it through. While it’s true that it’s error to not perform an obviousness analysis, it is not true that an appellate tribunal is entirely without power to find facts, and I’m not sure you even need to do any fact finding here. It likely is a legal holding that generates obviousness here:

    “[I]t is well settled that ‘a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for “anticipation is the epitome of obviousness.”‘” Slip op. at 9 (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).

    If anticipation is sufficient for a legal holding of obviousness, then the error is harmless as they were bound by precedent to hold it obvious once they made the anticipation finding.

    But even if you construed it as requiring fact finding, it’s proper for an appellate court to supply a factual finding when only an unreasonable fact finder could have found differently. Given that it was anticipated, there is no reasonable fact finding that could have been done to render it non-obvious.

    The actual issue the court has is a due process issue, which occurs when the court decides an issue (here whether the first reference contained the allegedly missing element) without giving a party a chance to be heard on it. The problem is that due process has to be raised by the appellant and that does not appear to have happened here.

    So tl;dr, bad decision saving bad lawyering to get what was ultimately the result that should have occurred because the PTAB did bad analyzing. And you all talk about the examiners getting reversed cause they don’t know the law, hahaha 🙂

    1. 5.1

      Random, that analysis works for me. But hey, I’m not an attorney at law. Let’s see what they all have to say about your analysis, the ones who are active here.

    2. 5.2

      Typical CAFC not thinking it through. While it’s true that it’s error to not perform an obviousness analysis, it is not true that an appellate tribunal is entirely without power to find facts,…

      This ‘analysis’ by the great “country lawyah” is flawed at its core, as “finding facts” does not abrogate the structural limitation that post grant reviews are before a neutral body and must adhere to the challenger’s asserted legal position.

      It is mere spin here to suggest that the CAFC ‘missed something’ and should have violated the legal precept to arrive at an Ends that Random prefers.

      Much like Random prefers to run away from the duplicity of his prior comments…

      1. 5.2.2

        This ‘analysis’ by the great “country lawyah” is flawed at its core, as “finding facts” does not abrogate the structural limitation that post grant reviews are before a neutral body and must adhere to the challenger’s asserted legal position.

        Yeesh talk about stepping in it. The PTAB is NOT required to adopt the entirety of the challenger’s original logic – the patentee doesn’t win if they can knock out any part of the challenges case. The PTAB is only required, as in this case, to determine if the claims are obvious over the two references. This is something you would know if you, you know, ever filed a complaint in any court anywhere.

        But if you don’t know, you could try researching before speaking. You can find examples of the CAFC correctly treating the issue and even upholding the PTAB multiple times in just such a situation just on this very website, take

        link to patentlyo.com

        as the best example. There it was raised as a due process issue and the holding includes the correct standard of determining if the PTAB changed theories without giving the applicant notice and a chance to be heard. It is NOT, as you suggest, that the PTAB has a “structural limitation” such that it lacks jurisdiction to change theories, it is only that the patentee is entitled to due process in doing so. That didn’t happen here. The PTAB was asked to decide if two references rendered a claim obvious, and they did, because one of the references anticipates and the CAFC has already said that anticipation is sufficient for obviousness. The only fault was that it made a finding that the first reference contained all of the limitations without giving the patentee a chance to marshal facts and law against that conclusion (at least with respect to the element the second reference was suggested for).

        This has actually been done correctly in the past, it just wasn’t done so here.

        This ‘analysis’ by the great “country lawyah” is flawed at its core

        You still haven’t learned that it’s almost never MY analysis, anon. I’m on the bottom of this particular totem pole. I almost always just parrot what other people have already said – I steal others’ analysis; that is my function. I just happen to have read a lot of stuff (kind of a boon in my profession, you know?). You can’t make the CAFC look good here, because its the CAFC disagreeing with what the CAFC has already said and what the CAFC already did. Much like with an obviousness analysis itself, the fact that I rewrote what the art already knew doesn’t add anything to anything. To complain about the analysis is to complain that the CAFC doesn’t know what it was doing, which is my point.


          Stepping in it – as you appear to miss the issue of the PTAB at point in a post grant proceeding (and appear instead to be talking about a different thing, that of the Article III CAFC under entirely different circumstances).

          Not only are you at the botttom of any such “totem pole,” what you did NOT answer was whether or not you are actually an attorney.

          Your profession is clearly that of an examiner (stealing others’ analysis is a fancy way of saying cut and paste form paragraphs), and you don’t even seem to recognize that it is reprehensible and unethical to claim to be an attorney when you are not.

          I would say “Shame,” but you appear to not understand the concept.

    3. 5.3

      And you all talk about the examiners getting reversed cause they don’t know the law, hahaha 🙂

      False equivalency much? (As this “politely” glides by MaxDrie’s notice while MaxDrie is just too busy agreeing with Random’s viewpoints)

  3. 4

    The only thing I really got from this case is that M&K apparently likes spending money on lawyers.

  4. 3

    “The patentee did not attempt to prove an earlier invention date. ”

    Big oops.

    “the court to find an APA violation by the PTAB”

    Gee, and what a far-too-rare CAFC finding that is.

    Normally rubber-stamping . . . whatever the still-a-death-squad PTAB asserts.

    1. 3.1

      Big oops.

      Perhaps not.

      If I recall correctly, by the time of the filing of the PCT (with some new matter — in the claims — the AIA was in force, and the party could not have anything but the then filing date.

      1. 3.1.1

        Yes, it strikes me too, that with claims reciting added matter it would be futile (for NW perhaps even “frivolous”) to assert that they are entitled under the Paris Convention to the filing date in Korea.

        Why did the patentee not try to “prove an earlier invention date”? Let’s suppose that the AIA governs and thus that the need is not an earlier date of invention but, rather, to prove that the claim is entitled to the filing date of the earlier application in Korea. Suppose the patentee was relying for patentability on the added matter, in the claim, in the PCT but not in the earlier filed Korean application. To assert (under Paris) that the invention of the claim and that in Korea are “the same” (in order to secure the filing date in Korea for the claim) would destroy the patentability-enhancing effect of the added matter, would it not?

      1. 2.1.1

        Up to 6 different threads in which you are so clearly desperate to attempt to have a ‘last word.’

        Even as I have already put to you: it is not merely the ‘last word,” but also the “best word” – something that you simply will NEVER have.


            No, thank you, as you prove my points with every instance of these choices of yours to engage in such games.

            Keep on making me right – I LOVE IT!

            (and I making bucks off of it to)


            Thanks !! We make more $$$$

            Again with the monkey dance. PLEASE. $$$$

            Thanks in advance $$$$


              No, thank you.

              And no need to do so ‘in advance,’ as I know that your 0bsess10n factor has set records that will never be broken.

              How much more miserable and sadly pa thet ic would your retirement be without me for you to focus on?

              Think about that as you pen your next tell.

                1. lol – look in the mirror for that poster child of “can’t help it.”

                  100% of your posts this year to or about me.
                  0% of your posts this year having anything meaningful or on point to the patent law article or discussions thereof.

                  Sooooo train-wrecky!

                2. squad role….?

                  Is that related to your meme of using a plural to refer to yourself?

                  You still paying yourself?

                3. You have said that so often, I wonder if it has any meaning (whatsoever) for you.

                  Maybe it’s your off-world translation of “ACME plans.”

                  Beep Beep.

                4. What does that even mean?

                  What is it that you think it is that shows “my generosity?”

                  Is this yet more of your deeply troubled projections coupled with that “we” of yours that also is a part of you paying yourself?

                5. [sigh]

                  Of course, it’s your inevitable monkey dance you just cannot help. We’ve been over this numerous times.

                  [what a maroon]

                  Monkey, Dance $$$

                6. You are projecting again.

                  As the numbers (100/0) show, it is you that cannot help yourself.

                  Sort of like that ga y kiddie clown p0 rn add1ct10n that you have.

                  Have you sought to remove those restraining orders yet?

                7. It is not for you to command someone else to “do” any telling

                  It is for you to realize your own action have already “done” that telling.

                  You seem baffled by this.

                8. I understand the phrase – but do not understand what point that you are trying to make by using that phrase.

                9. We understand that you do not understand, Snowflake. That’s what you do.

                  [what a maroon]

                10. Rather than accuse, perhaps you should try to understand that the SOURCE of the lack of understanding is you.

                  But you already know that, eh?

                  This is nothing more than the same old game from you.
                  Your obsess10n is to fins “SOME” fault with me – ANY fault.

                  There is ZERO effort on your part to have an actual conversation on any aspect of patent law, is there?

  5. 1

    Since the Fed. Cir. decision remanded Claim 3 back to the PTAB, presumably the PTAB panel could now change its decision on claim 3 to 103 by providing the missing response-opportunity to the patent owner on that issue which was never asserted by the petitioner at any point of the IPR?
    Would the outcome here have been different if the petitioner had not been stuck with its strangely volunteered direct admission against interest that the primary reference for this claim is missing one claim element?

    1. 1.1

      As to the same document being held to be prior art in one case but not another, that is clearly possible for this kind of document by better case law briefing together with better deposition factual support for the relevant facts to fit that case law, as this decision shows.

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