A One-Way Street: A Petition Arguing Obvious Did Not Give Notice of AnticipationFebruary 19, 2021 – Insight
In M&K Holdings, Inc., v. Samsung Electronics Co., Ltd., 2020-1160 (Fed. Cir. Feb. 1, 2021), the Federal Circuit found that the Patent Trial and Appeal Board (Board) violated the Administrative Procedure Act (APA) by finding a patent claim unpatentable using a “markedly” different theory from the one the patent challenger presented.
In this case, the patent challenger (i.e., petitioner) petitioned for inter partes review, asking the Board to find certain patent claims unpatentable.[i] The petitioner argued (1) that a first prior-art reference—WD4-v3, a publication from a task force that functioned “to establish industry standards” in the relevant industry—contained every limitation of claims 1 and 2—anticipating those claims; and (2) that the first reference combined with two additional references contained every limitation of claim 3—rendering claim 3 obvious.[ii] The Board, however, analyzed all three claims—and found them unpatentable—based on a theory of “anticipation, not obviousness.”[iii]
The Federal Circuit found that the Board erred when it found claim 3 unpatentable due to anticipation because the patent owner did not have notice of the anticipation theory against claim 3.[iv] The APA requires the Board to “‘timely inform the patent owner of the matters of fact and law asserted’ and ‘give all interested parties the opportunity to submit and consider facts and arguments[.]’”[v] The Federal Circuit summarized the reason for the APA’s notice requirement: “If [the patent owner] had been given notice of the anticipation theory, it could have challenged the Board’s interpretation of claim 3[.]”[vi]
The Federal Circuit concluded that “that the Board deviated impermissibly from the invalidity theory set forth in Samsung’s petition when it held that claim 3 was anticipated by [the first reference],” after the petitioner had only argued unpatentability based on a theory of obviousness.[vii] The Federal Circuit, therefore, vacated that portion of the Board’s decision and remanded for the Board to reconsider “the patentability of claim 3.”[viii]
In the same appeal, the patent owner also argued that the Board erred by relying on two references to find certain claims obvious that did not meet the public-accessibility requirement for prior-art references. [ix] In finding the two disputed references publicly accessible, the Board found that, prior to the relevant date, (1) a prominent industry task force made the references available on its website, searchable by title; and (2) 200–300 task-force meeting attendees heard presentations on the two disputed references.[x] The Federal Circuit reviewed the Board’s findings regarding the public accessibility of the references for substantial evidence and affirmed.[xi]
[i] Id. *2–3.
[ii] Id. Claim 2, as a claim dependent on claim 1, contained all of claim 1’s content and added additional content. Claim 3, as a claim dependent on claim 2, contained all of the content of claims 1 and 2 ad added additional content.
[iii] Id. *14.
[iv] Id. *15.
[v] Id. *12 (quoting EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1348 (Fed. Cir. 2017) (quoting 5 U.S.C. § 554(b)(3) and (c)(1))).
[vi] Id. *16.
[viii] Id. *17.
[ix] Id. *4–5 (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004) for the proposition that a prior art reference must be “publicly accessible” before the patent’s priority date); see 35 U.S.C. § 102(a)(1).
[xi] Id. *12.