Federal Circuit Affirms PTAB’s Finding That General Knowledge Can Supply Missing Claim Limitations In Obviousness Analysis
On January 30, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the a final decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that appellant’s patent claims are unpatentable. Koninklijke Philips NV v. Google LLC, __ F.3d __ (Fed. Cir. Jan. 30, 2020). While the CAFC ruled that the PTAB lacked the discretion to institute review inter partes review (IPR) based on grounds not presented in an IPR petition, it affirmed the PTAB’s obviousness decision based on a ground that was contained in appellee’s petition.
The challenged ’806 patent relates to a method of forming a media presentation that provides the presentation in multiple files so a media player can download the next file concurrently with playback of the previous file.
Appellee IPR petitioner challenged the ’806 patent as anticipated by SMIL 1.0, a prior art publication describing the Synchronized Multimedia Integration Language computer programming language, and, in the alternative, as obvious over SMIL 1.0 in view of the general knowledge of the skilled artisan regarding distributed multimedia presentation systems and the allegedly well-known technique of pipelining multimedia content. As evidence of this “general knowledge,” petitioner relied on an expert declaration and a publication by Hua.
Patent owner, in its preliminary response, argued that it was inappropriate for petitioner to rely on Hua as evidence of general knowledge, and that petitioner was required to make Hua part of the proposed obviousness combination and to explain how Hua would have been combined with SMIL 1.0. Patent owner also argued that petitioner could not rely on “general knowledge” to supply a missing claim limitation.
The PTAB instituted review on both proposed grounds, and, invoking discretionary authority, also instituted review based on the combination of SMIL 1.0 and Hua. In its final written decision, the PTAB rejected the anticipation ground, but found the challenged claims obvious over the combination of SMIL 1.0 and general knowledge, and also over the combination of SMIL 1.0 and Hua.
On appeal, patent owner argued, inter alia, that 1) the PTAB did not have discretion to institute based on the combination of SMIL 1.0 and Hua, because that combination was not presented in the petition, and 2) that “general knowledge” of skilled artisans cannot be used to supply a missing claim limitation because i) 35 U.S.C. § 311(b) expressly limits inter partes reviews to prior art consisting only of patents or printed publications, and ii) under the CAFC’s Arenadi decision, invoking “common sense” to supply a missing limitation is disfavored.
With respect to the first issue, relying on the Supreme Court’s SAS decision, the CAFC concluded that the PTAB does not have discretion “to depart from the petition and institute a different inter partes review of his own design.” As further noted by the CAFC, the Supreme Court has explained that 35 U.S.C. § 311(a) does not “contemplate a petition that asks the Director to initiate whatever kind of inter partes review he might choose.”
With respect to reliance on “general knowledge” to supply a missing claim limitation, the CAFC noted that the obviousness inquiry, regardless of tribunal, requires an analysis of whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103. Thus, the CAFC reasoned, any decision on obviousness depends on the artisan’s “general knowledge.” The CAFC also distinguished its Arenadi decision as one in which “common sense” was invoked in conclusory fashion, whereas in this case, the PTAB relied on expert evidence corroborated by Hua in concluding that pipelining was not only in the prior art, but also within the general knowledge.