Documents sent on an email list may qualify as prior art. SAMSUNG v. INFOBRIDGE

A patent is a set of exclusive rights granted to the inventor of an invention. To obtain a patent in the United States an inventor must file a patent application with the United States Patent and Trademark Office. The patent application is reviewed by a patent examiner at the United States Patent and Trademark Office to ensure that the invention described in the patent application meets all the criteria for patent protection. If the patent application meets all the criteria for patentability then the inventor will be granted a patent on the invention. A patent grants the inventor the exclusive right to make, use, sell and import the patented invention in the United States. If someone other than the owner of the patent attempts to exercise one of these exclusive rights that can be considered patent infringement.

After a patent is granted it is not immune from attack. Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. The inventor and the patent examiner do their best to consider all the relevant prior during the patent application process, but sometimes relevant prior art is overlooked. If a member of the public discovers a piece of prior art which anticipates a patent which has been granted they may request an inter partes review of the patent. An inter partes review can result in invalidation of some or all of the claims of a patent.

For a document to be considered prior art, it must be publicly accessible. Secret documents or documents that are not readily accessible to the public will not be considered prior art. The question then becomes when is a document publicly accessible enough to be considered prior art?

SAMSUNG ELECTRONICS CO., LTD., v. INFOBRIDGE PTE. LTD., 2018-2007 (C.A.F.C. 2019) is a case with deals with this issue. The defendant in this case owns the U.S. Patent 8,917,772, titled “Method of Constructing Merge List” which generally relates to encoding and decoding video data. The patented methods are essential to the High Efficiency Video Coding standard (“the H.265 standard”). This video standard is widely used to record video on devices and stream video through the internet. Samsung requested an inter partes review of the ‘772 on the grounds that the claims of the patent were disclosed by prior art, specifically Working Draft 4 of the H.265 standard which was developed by the Joint Collaborative Team on Video Coding. The Working Draft was discussed at in person meetings of the Joint Collaborative Team, on an email list serve for team members and a copy of the working document was available on the Joint Collaborative Team’s website.

The Patent Trial and Appeal Board upheld the patent claims because it found that Samsung failed to show that the prior art reference was publicly accessible before the ’772 patent’s critical date and thus could not be considered prior art. The Patent Trial and Appeal Board concluded that there was insufficient competent evidence to show that a person of ordinary skill in the art would have known to check the JCT-VC website for information. Samsung appealed the ruling to the Court of Appeals for the Federal Circuit.

The Federal Circuit noted that public accessibility depends on a careful, case-by-case examination of how a particular reference was disseminated, to whom, for how long, and under what circumstances. Just because a document has been uploaded to a website and is technically accessible does not make the document publicly accessible. There must be some showing that a person of ordinary skill interested in the relevant subject matter would have been independently aware of the website and that the person would have found the document on the website using reasonable diligence.

In the case of the Working Draft, the Federal Circuit held that the Working Draft could be considered publicly accessible in the case of the email list serve. The standard for public accessibility is whether prior art could be accessed, actual access does not need to be proven. In the case of the website, the Patent Trial and Appeal Board did not err in finding that accessibility was not established because the website lacked a search function which would allow the Working Draft to be accessed using reasonable diligence.

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