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.”