The Software IP Report
References Still “Printed Publications” and Publicly Accessible under § 102 on a Poorly Designed Website
In a precedential opinion, the Federal Circuit upheld the decision of the USPTO’s Patent Trial and Appeal Board (PTAB) that documents presented at an industry task force meeting and later made available on the task force website qualify as printed publications under 35 USC § 102. M & K Holdings v. Samsung Elecs. Co., 2020-1160, (Feb. 1, 2021; Opinion by Judge Bryson, joined by Judges Moore and Chen).
The case came on appeal after a 2018 petition for Inter Partes Review (IPR) requesting the PTAB find all claims of U.S. Patent No. 9,113,163 (“the ‘163 patent”) unpatentable. The opinion addresses two issues, whether two documents qualified as printed publications under § 102, and a procedural issue which I do not discuss here.
Relevant Law
As the Court outlines, whether a reference is a “printed publication” under § 102 is a case-by-case inquiry based on underlying factual finding, with the key inquiry being whether a reference has been made publicly accessible before the priority date of the patent. Recall that, as explained in MPEP 2128.01, a “printed publication” must be “sufficiently accessible to the public interested in the art.” The threshold of public accessibility is met when a document is placed in an online database, if the database is sufficiently accessible to the public. This threshold can also be met when copies of a paper orally presented in an open forum are available without restriction.
Background
In the IPR, the petitioner relied on three references “generated in connection with the work of a joint task force to establish industry standards for high-efficiency video coding (‘HEVC’). The task force [is] known as the Joint Collaborative Team on Video Coding (‘JCT-VC’).” The three references included a working-draft document, WD4-v3, of industry standards, and two papers, Park and Zhou, that served as input documents to WD4-v3. As the Court explained, the JCT-VC holds quarterly meetings where it discusses proposed changes (e.g., the Park and Zhou papers) and if the changes are agreed to, they are incorporated into the working-draft document.
The PTAB held that the three references were publicly accessible before the priority date of the ‘163 patent. The PTAB determined that the references were posted to the JCT-VC’s public website and that the JCT-VC was a prominent standards-setting organization in the HEVC space.
The Court discussed parallels between the public accessibility of the Park and Zhou references and the references at issue in Mass. Inst. of Tech. v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985) (cited and discussed in MPEP 2128.01). In the MIT case, a paper was presented orally to 50-500 people at a scientific meeting “open to all persons interested in the subject matter.” Following the presentation, written copies of the paper were made available without restriction to anyone who requested the paper. The paper, even though only distributed to six individuals, was deemed a printed publication.
The Park and Zhou papers were presented at JCT-VC development meetings attended by 200-300 people. At the JCT-VC meetings, Park and Zhou were discussed and the PTAB noted that the meeting reports summarized the discussions surrounding Park and Zhou. The PTAB found that Park and Zhou were discussed without any expectation of confidentiality and that copies of the references were available to the public on the JCT-VC website. Additionally, the meeting reports which summarized the discussions of Park and Zhou directed readers to the website.
The Court also highlighted the PTAB finding that JCT-VC was prominent “in the community of those skilled in video-coding technology.” The PTAB had reasoned that skilled artisans would have been motivated to stay abreast of JCT-VC website updates to “ensure their products and services were consistent with the developing HEVC standards.”
Analysis
The appellant made two arguments on appeal that are the focus of this post and the Court’s opinion. First, the appellant argued that, while WD4-v3 is a prominent document, Park and Zhou were not equally prominent. Second, the appellant argued that though the papers were available on the JCT-VC website and the site had a search functionality, these were not dispositive of public accessibility. The appellant also made arguments about the breadth and depth of the meetings discussing the Park and Zhou references, but the Court made quick work of those arguments.
With respect to the first argument, prominence, the Court said that a document’s showing of prominence likely establishes public accessibility per se. However, the relevant inquiry related to prominence is focused on the channel of distribution, and whether “the channel through which the references were publicized is prominent or well-known.” As described above, the PTAB found the JCT-VC and their website were prominent in the community of skilled artisans, and the Court agreed.
The part of the opinion I find most intriguing is the appellant’s second argument. They argue that the JCT-VC website was, as I would characterize it, bulky and not user-friendly (pages 8-11 of the opinion describe the website and its functionalities in depth). The appellant reasoned that the website lacked sufficient descriptions to describe the document repository. However, the Court rejected this part of the argument by reasoning that the “website is structured to serve the purpose of the JCT-VC organization…” and that a skilled artisan would know how to navigate the website to find the information desired. The appellant also targeted the limitations of the website’s search functionality, though again, the Court was not swayed.
The JCT-VC website had a title search functionality which the Court explains (see Note 4) as being sufficient when the reference in question can be found via a title search and the reference had a sufficiently descriptive title. The appellant relied on the Court’s holding in Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363 (Fed. Cir. 2019), where the PTAB found that the evidence did not show the reference in question was publicly accessible through a title search. The Court distinguished Infobridge on the grounds that Park and Zhou were accessible via a title search on the JCT-VC website and this was supported by evidence. The title of Park is “Modifications of Temporal MV Memory Compression and Temporal MV Predictor,” and Zhou is “Non-CEP9: Modified H Position for Memory Bandwidth Reduction in TMVP Derivation.” The ‘163 patent relates to a motion vector predictor (MV Predictor).
Lessons for Practice
There are several key takeaways from this opinion as it relates to printed publications as prior art under § 102.
- No matter how bulky or non-functional a website may be, if a skilled artisan can understand the purpose of a website and navigate it accordingly, the information contained on that website will likely meet the publicly accessible threshold. Access via a standard search engine was not at issue in this case.
- When considering the prominence of a publication, the relevant inquiry relates to the prominence of the distribution channel and not the prominence of the individual reference.
- When working with inventors or business entities, consider the addition of a section to their invention disclosure forms asking the inventor to identify any prominent industry associations or standards setting organizations in which the inventor or applicant may participate.