Printed Publications and Search Functionality – The Federal Circuit Weighs In

On appeal of a PTAB decision finding all claims in a patent directed to compressing video files unpatentable, the Federal Circuit clarified two issues. This post considers the first clarified issue – what is required for a reference to be considered a printed publication for the purposes of an IPR?

In M&K Holdings v. Samsung Electronics (No. 2020-1160), the patent owner argued that several cited references did not qualify as printed publications, and thus could not be used as the basis for finding unpatentability in an IPR. Although the references were available on an industry group’s website, the patent owner argued the references were not publicly accessible, and thus could not be considered printed publications, because the references were not easily found on the website. Instead of having a single intuitive search page, a user needed to click through various links to get to the references.

The Federal Circuit disagreed that the standard for public accessibility is so restrictive.

Reviewing prior cases on public accessibility, the Court identified two lines of cases. In one line, public accessibility of a document is shown through inclusion in a physical or virtual repository, such as a library or in a searchable website on the Internet, that enables those skilled in the art to identify relevant documents. In the other, accessibility is shown through a presentation at a prominent event for the relevant technical community.

The Court considered this case to involve an overlap of these two lines of cases, with events surrounding a presentation at a meeting of a relevant industry group providing a link that would enable a reasonably diligent artisan to identify the documents within a repository with limited search functionality. The difficulties finding the references that the patent owner noted would not necessarily preclude a finding that the references could not be found with reasonable diligence.

The Federal Circuit also responded to other arguments made by the patent owner. The Court explained that the petitioner did not need to prove that interested artisans actually accessed the references on the industry group’s website – the references being sufficiently accessible was enough. As the Court explained, because the petitioner argued that the presentations at the industry group’s meetings only served as a link to the documents, the petitioner did not need to show that the presentations and references had identical content.

Overall, the Federal Circuit found substantial evidence to show that a person of ordinary skill in the art could have found the references with reasonable diligence, such that they were printed publications.

Takeaway

• Although we live in a world where documents can often be found with a quick internet search, this case is a reminder that a document might still be publicly accessible (and a printed publication for IPR purposes) without that search functionality, if an artisan, exercising reasonable diligence, could have found it in other ways.