Home Legal Advice Federal Circuit: Anticipation not Inherent to Obviousness Argument

Federal Circuit: Anticipation not Inherent to Obviousness Argument


by Dennis Crouch

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

M&Ok’s U.S. Patent No. 9,113,163 covers a “method of decoding moving picture.”  There is a few historical past between Samsung and M&Ok’s household unit of corporations, whose patents additionally originate in Korea.  This appeal stems from an IPR remaining written resolution discovering the challenged claims invalid.

Decide solely the Issues Raised: The first bit right here is straightforward however quirky.  The petition challenged declare Three 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 half, Samsung argued that the anticipation holding was no-problem. Just just like the vast-majority-of-cases, the anticipation right here is inherent within the obviousness idea.  In explicit, now we have the identical prior artwork — its simply that the PTAB solely wanted the first reference.  In its petition, Samsung instructed a second reference displaying the “predetermined block” declare limitation.

On appeal, the Federal Circuit discovered discover missing since Samsung’s unique petition acknowledged that the first reference didn’t disclose the “predetermined block.” According to the court docket, if M&Ok had identified in regards to the anticipation argument, it might need shifted its argument in regards to the scope of declare 3.  The cynicism right here is pertinent – the Federal Circuit is recognizing and even encouraging events to shift their patent declare that means arguments relying upon the circumstances. This end result might be linked with the court docket’s conclusion in Egenera, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2020). In that case, the court docket permitted the patentee to shift its arguments relating to declare that means and patent scope because the case moved via numerous tribunals.

In the tip, the distinction right here between anticipation & obviousness was ample sufficient for the court docket to seek out an APA violation by the PTAB to find the declare anticipated.

Printed Publication: The patentee additionally challenged the choice by arguing that a few of the references relied upon weren’t really prior artwork. We have three references at subject that had been all uploaded to a web site managed by the Joint Collaborative Team on Video Coding (“JCT-VC”):

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

All three had been uploaded to the server, and the patentee argued that an individual of peculiar ability within the artwork couldn’t have discovered Park or Zhou utilizing cheap diligence earlier than the patentee’s precedence date of December 13, 2011.  Here, the references had been every mentioned at a JCT-VC improvement assembly of ~200 folks previous to that date, and people conferences weren’t topic to “any expectation of confidentiality.”  The paperwork had been hosted in downloadable type, and could possibly be searchable by title.  Further, JCT-VC was a “prominent” group inside these expert in video-coding expertise and people outdoors the group would have discovered the web site.   In reviewing the relevance of those information, the Federal Circuit requested “whether the channel through which the references were publicized is prominent or well-known among persons of ordinary skill in the art.”  These information got here collectively to permit 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 right here that this resolution is in some severe pressure with Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363 (Fed. Cir. 2019) (Version Four of the identical working draft not prior artwork).  That resolution intertwined a patent from the identical inventor, Soo Mi Oh.

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One oddity of this case is the precedence dates.  The patent utility at subject was really filed in September of 2012 however claims precedence again to 2 Korean purposes filed in 2010 and early 2011 after which a PCT utility filed in Korea on December 13, 2011.  The PCT utility contains extra matter that’s discovered within the claims. The patentee didn’t try and show an earlier invention date.  So, the December 13, 2011 date was used because the critical-date for 102(a) prior artwork.


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