In a precedential opinion, M&K Holdings, Inc. v. Samsung Electronics, Inc. (Fed. Cir. Feb. 1, 2021), the Federal Circuit further clarified the scope of prior art printed publications under 35 U.S.C. § 102. The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision that the prior art at issue in an inter partes review proceeding, which had been generated as part of a joint task force for establishing industry standards, qualified as a printed publication.
In addition, the Federal Circuit addressed the issue of notice under the Administrative Procedure Act (APA). The Federal Circuit vacated the PTAB’s finding of anticipation with respect to one of the claims at issue, holding that because the underlying petition for inter partes review had asserted only obviousness for that claim, the PTAB’s reliance on anticipation impermissibly deviated from the invalidity claims for which the respondent had been put on notice.
The asserted patent was directed to methods for compressing video files. For its arguments before the PTAB, the petitioner relied on prior art that arose from a joint task force for establishing industry standards for high-efficiency video coding. The documents were discussed at the joint task force meetings and subsequently published on the joint task force website.
In rejecting the respondent’s arguments that the prior art did not qualify as printed publications, the Federal Circuit emphasized that the “key inquiry” is public accessibility and that a reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it” (quoting Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016)).
The Federal Circuit held that it is sufficient to show that the channel through which the references were publicized – here, the joint task force meetings and website – was prominent or well known among persons of ordinary skill in the art. It is not necessary to show that the references themselves were prominent. Further, there is no requirement that the website landing page have search functionality, and any more focused search capability within the website need not provide the ability to search documents by content. Finally, it is not necessary to show that anyone actually used the website to access the documents. The Federal Circuit held that substantial evidence supported the PTAB’s finding that persons of ordinary skill in the art could have accessed the prior art with reasonable diligence through the joint task force website.
Finally, in vacating the PTAB’s finding of anticipation for lack of proper notice under the APA, the Federal Circuit rejected the petitioner’s argument that anticipation was inherent in its obviousness theory, noting that the petitioner expressly stated in its petition that the particular prior art reference failed to disclose certain limitations of the relevant claim. As a result, the PTAB’s anticipation finding based on that reference constituted a marked deviation from the evidence and theories presented in the original petition.