It is common in some industries that when new technologies are being developed and introduced, the persons involved will meet to collaborate to develop standards for use and implementation of the technology.
This can be beneficial to consumers, as it facilitates implementation of standard features for the technology that competitors can incorporate into their products, giving consumers greater choice of products compatible with the standard.
But such discussions can impact patent protection of the companies that participate. A recent Federal Circuit decision, Samsung Electronics v. Infobridge Pte. (Fed. Cir. 2019), considered an industry paper directed to video coding technology which Samsung claimed invalidated a patent held by Infobridge.
The key question was whether the dissemination of the paper – at the group’s meeting, on the group’s website, and through the group’s list serve – constituted “publication” of the industry paper sufficient to render it prior art that would invalidate the patent.
The Federal Circuit ruled that the first two were not publications, but the third had to be remanded for consideration under the correct legal standard.
Companies involved in developing technologies that involve industry cooperation and standards development need to use caution when circulating such standards papers, lest they invalidate patent rights.
The Samsung case shows that both goals can be achieved, if one is careful to ensure that the dissemination of the information does not turn into potentially invalidating “prior art.”
Infobridge owns a utility patent directed to the encoding and decoding of video data.
Samsung brought two inter partes review proceedings before the Patent Trial and Appeal Board to invalidate the patent. The PTAB upheld their validity, and Samsung appealed.
A key issue was a prior art reference – a working draft of an industry standard for such technology, which had been developed by the Joint Collaborative Team on Video Coding, a group including academics and technology companies.
A patent is not valid if the invention disclosed in it was “described in a printed publication . . . more than one year prior to the date of the[patent] application.” 35 U.S.C. § 102(b). To count as prior art, the Federal Circuit has construed two requirements: (1) that a putative prior art reference be printed and (2) that the reference be published, i.e., accessible to the public.
What constitutes a “printed publication” must be determined in light of the technology employed, and public accessibility is the “touchstone.”
A reference is considered publicly accessible if “persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.”
Samsung argued that three disseminations of the paper counted as publication, each of which the Federal Circuit reviewed:
Circulation at Conferences
First Samsung argued that the industry paper had been circulated at meetings held in Torino and Geneva. But, apart from the fact this argument had been waived, the paper had in fact been developed after the meetings were held, based on discussions at the meeting. So, this clearly did not qualify as a publication.
Posting on a Website
The paper was posted to the group’s website, where it might have been accessed by persons skilled in the art. But, critically, the paper was not indexed in any way that would make it readily accessible. Rather, the paper was included in folders associated with the particular meetings that had taken place in Torino and Geneva.
A person skilled in the art would have no reason to access these city-based folders. Without indexing of the article, it was not readily accessible.
The Federal Circuit also rejected Samsung’s argument concerning the circulation among the 250 members of the group – skilled artisans in that technology. Circulation to that group, argued Samsung, was in effect a publication.
But the Federal Circuit held that a work is not publicly accessible if the only people who know how to find it are the ones who created it – in this case the entire working group of 250. Since the group members “were part of ongoing, collaborative efforts” to draft the industry paper, dissemination to them did not constitute publication.
The paper at issue was also emailed to the group’s listserv. The email list included the group members and other “interested individuals.” Importantly, anyone could request to be added to the email service list, and the group generally approved all such requests if the person had a valid email address.
The PTAB ruled that this was not a publication, because there was no evidence that the 250 members represented a significant portion of the those interested in and skilled in the art. This ruling was legal error according to the Federal Circuit. The standard for public accessibility turns on whether persons skilled in the art could access the paper after exercising reasonable diligence, not whether they did access it in fact.
The critical question was whether the listserv dissemination, which included the option for anyone to sign up and receive the emails, was sufficient, meaning that persons skilled in the art would know about and be able to sign up for the listserv list. This required further factual development. So, the Federal Circuit remanded for further factual development under the appropriate legal standard.
Lessons to Be Learned
The Samsung decision provides important guidance for entities involved in collaborative efforts among industries to develop standards, while at the same time protecting one’s patent position and avoiding creation of potentially invalidating “prior art.”
Disclosures that are contained within the industry group will generally not be considered publication. But it is important that the means of dissemination – be it at a conference, through a website or a listserv, be such that the dissemination remain contained.
And, the determining factor is accessibility, not actual access. If there is real possibility that the information can be accessed by persons in the art, then that may constitute a publication.