Introduction

On January 30, 2020, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made a decision in Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile Inc. Koninklijke Philips N.V. (“Philips”) is the owner of U.S. Patent No. 7,529,806 (“the ‘806 patent”), titled “Partitioning of MP3 Content File for Emulating Streaming”.

The ‘806 patent “relates to content and/or control communications between multiple computer systems, or to such communications between computer systems and consumer devices.” More specifically, when communication is “constrained by bandwidth or limited by data processing resource”. Philips “appeals the decision of the Patent Trial and Appeal Board (“Board”) in an inter partes review of [the ’806 patent], in which the Board found that claims 1–11 were unpatentable as obvious.” Google LLC, Microsoft Corporation, Microsoft Mobile Inc. (“Google LLC”) also submits that if Claims 1-9 and 11 are found nonobvious, they “can affirm the judgment as to claims 1–9 and 11 on the alternative ground that the claims are anticipated”.

Decision

Per the standard, “[the Federal Circuit] review[ed] the Board’s legal determinations de novo and its underlying factual determinations for substantial evidence.” Philips has three arguments in regard to their appeal of the original decision. Philips’s arguments are (1) “the Board erred by instituting inter partes review;” (2) “the Board erred in finding that the claims would have been obvious;” and (3) “the Board’s obviousness findings are nevertheless unsupported by substantial evidence.”

First, Philips argues “that the Board erred by instituting inter partes review on a ground not advanced in Google’s petition.” The Board reviewed “three grounds of unpatentability: (1) anticipation in view of SMIL 1.0; (2) obviousness over SMIL 1.0; and (3) obviousness over SMIL 1.0 in combination with Hua.” However, Google’s petition did not include the third ground to review. It was concluded that “the Board erred by instituting inter partes review of claims 1–11 of the ’806 patent based on obviousness over SMIL 1.0 and Hua because Google did not advance such a combination of references in its petition”

Second, Philips argues “the Board erred in relying on “general knowledge” to supply a missing claim limitation.” They stated that “the prior art that can be considered in inter partes reviews is limited to patents and printed publications, [however] it does not follow that [they] ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” The Federal Circuit’s conclusion was “that the Board did not violate § 311(b) or the inter partes review statute in determining that the claims would have been obvious over SMIL 1.0 in light of the general knowledge of a skilled artisan.”

Third, “Philips argues that substantial evidence does not support the Board’s determination that the claims would have been obvious over SMIL 1.0 in light of a skilled artisan’s general knowledge.” It was stated from an expert declaration and “the Board found that a skilled artisan ‘would have been motivated to reduce the wait time to receive media content over the Internet by using pipelining with SMIL 1.0.’” The Federal Circuit determined that “the Board’s factual findings underlying its obviousness determination are supported by substantial evidence.”

For the reasons above, the Federal Circuit affirms the Board’s judgement.

Conclusion

This decision determines that even though general knowledge may not solely be relied on for inter partes reviews, general knowledge cannot be ignored if the knowledge along with evidence thereof would make the modifications obvious.

Full Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile Inc. decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1177.Opinion.1-30-2020_1524001.pdf

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