United States: A Reference Is Publicly Accessible If A Person Of Ordinary Skill In The Art Could Access The Reference

In a recent decision vacating the PTAB's finding that a draft standard for video coding emailed to a listserv was not publicly accessible, the Federal Circuit again corrected the PTAB's application of the legal standard to determine the public accessibility of prior art. Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd., case no. 2018-2007, 2018-2012, 2019 WL 3047113 (Fed. Cir. July 12, 2019). Although multiple means of accessibility were alleged, the PTAB's analysis was upheld with respect to all but the listserv distribution. For the listserv, the court said that the PTAB improperly required the petitioner (Samsung) to show that the reference was "generally" or "widely" disseminated to "a significant portion of those interested and skilled in the art." In doing so, the PTAB confused access and accessibility. Once it is shown that a person of ordinary skill in the art could access the reference, said the court, there is no additional requirement that particular members of the public actually received the information.

The PTAB Decision

In this case, the PTAB upheld all challenged claims of U.S. Patent 8,917,772 owned by Infobridge. The challenged claims are directed to methods of encoding and decoding video data. The parties agreed that the claimed methods are essential to the High Efficiency Video Coding standard ("the H.265 standard"). The Board found that Samsung failed to show that its primary prior art reference, Working Draft 4 of the H.265 was publicly accessible before the patent's critical date.

Working Draft 4 was created during a July 2011 meeting of the Joint Collaborative Team on Video Coding ("JCT-VC") in Torino, Italy that included about 250 participants. The draft standard was adopted at the next meeting of the JCT-TV in Geneva which occurred in November 2011. Working Draft 4 was uploaded to the JCT-VC website on October 4, 2011. To access it, users were required to select a menu option, choose the Torino meeting, and select from a list of documents by their identifying number. Working Draft 4 was also available from the JCT-TV's parent organization's website which required a login and password. On the same day that Working Draft 4 was uploaded to the JCT-TV website, it was also emailed via a listserv that included those who attended the Torino meeting and other interested individuals. This email included a download link to access the reference.

The PTAB concluded that there was insufficient evidence to show that a person of ordinary skill in the art would have known to check the JCT-VC site for information of relevance to the art. The Board rejected evidence submitted by the lead author who emailed the reference to the listserv addressing this point because the Board found he could not testify about whether others would have looked to the website to learn about developments in video coding. The Board also concluded that there was no evidence that a person would have located the reference on the website using reasonable diligence. The Board similarly rejected the testimony by the individual who emailed the reference to the listserv stating that the email was sent to individuals outside the JCT-VC as nothing more than conjecture and speculation.

The Federal Circuit Decision

Reiterating the legal standard that a reference is publicly accessible if "persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it," the Federal Circuit considered separately the meetings, the websites, and the listserv distribution.

With respect to Samsung's argument that the standard was distributed at the meetings in Torino and Geneva, Samsung waived any reliance on distribution at the Torino and Geneva meetings during oral argument. With respect to the Torino meeting, the document was not created until after the meeting and thus could not have been circulated at the meeting itself. The Geneva meeting occurred after the critical date.

Turning to the websites to which Working Draft 4 was uploaded, Samsung argued that the PTAB improperly required Samsung to prove access outside the JCT-VC membership. The Federal Circuit disagreed, holding that a work is not publicly accessible if the only people who know how to find it are the ones who created it. In reaching this conclusion, the court relied on previous cases in which a reference was shared with a three-person faculty review committee and with a single individual by FTP. The court's attempt to analogize these examples to a 254-person working committee of a standards setting organization seems like a stretch. But, the court found substantial evidence to support the PTAB's finding that only members of the JCT-VC would have known to check the JCT-VC site and select the Torino meeting to find Working Draft 4. The court stated that "[t]o hold otherwise would disincentivize collaboration and depart from what it means to publish something."  Thus, the court agreed that the proper consideration was whether those outside of the JCT-VC knew about the website and could find the reference there.

The court did agree with Samsung, however, that the PTAB erred in its consideration of the listserv distribution. The testimony showed that any person could subscribe to the listserv and that anyone with a valid email requesting subscription was typically approved. The PTAB erred by requiring Samsung to show that the reference was widely or generally disseminated and that the email recipients represented a "significant portion of those interested and skilled in the art." The court stated this was not Samsung's burden. Public accessibility requires a showing that a person of ordinary skill in the art could access the reference with reasonable diligence, but there is no additional requirement that particular members of the public actually accessed it. The court remanded to the PTAB to consider issues such as whether a person of ordinary skill exercising reasonable diligence would have joined the listserv, why the email was sent, and whether it was covered by an expectation of confidentiality.

The Federal Circuit also addressed Samsung's standing to bring the appeal. The '773 patent is licensed as part of a pool of patents that are essential to the H.265 standard. Samsung is also the owner of patents in that pool. Licensees pay a fixed royalty for the pooled patents and then members who own the patents divide the royalty based on the number of patents in the pool. The Federal Circuit agreed with Samsung that Samsung would receive higher royalties if the '772 patent is invalidated and removed from the pool. This injury was sufficient to provide Samsung standing to bring the appeal.

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