CAFC Rules PTAB Did Not Err in Finding Philips Patent Obvious in Light of General Knowledge of POSITA

“Google properly alleged that even though SMIL 1.0 did not disclose all elements of the claimed invention, the differences between the claimed invention and SMIL 1.0 are such that the invention would have been obvious to one of ordinary skill in the art.”

On January 30, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeals Board’s (PTAB) decision rendering claims 1-11 of U.S. Patent No. 7,529,806 (the ‘806 patent) obvious. The ‘806 patent, owned by Koninklijke Philips (Philips) is directed toward improved playback of digital content on a client device through reducing delay. The patent covers a method for forming media presentations using a control information file that does two things: (a) provides the media presentation in various alternative formats, allowing a client device’s media player to “choose the format compatible with the client’s play-out capabilities” opposed to using two way intelligence between the client and server software; and (b) provides the presentation in multiple files so that subsequent files download at the same time as files are played back.

The Prior Art

There are two prior art references to this type of system: Synchronized Multimedia Integration Language 1.0 Specification (SMIL 1.0) and Kien A Hua et al., 2PSM: An Efficient Framework for Searching Video Information in a Limited-Bandwidth Environment, 7 Multimedia Systems 396 (1999) (Hua). SMIL 1.0 describes a computer language in which a SMIL file specifies the relationship among media files that make up a media presentation, such as a “switch” element that specifies a set of alternative files from which only one should be chosen by a media player. For instance, the switch element can specify files of different quality and instruct a media player to select one of the files based on the client system’s bandwidth. SMIL 1.0 also teaches a “seq” element that instructs a media player to play the files in sequence. SMIL 1.0 does not disclose a way to specify the timing for playback of a specific media file alongside another file that’s downloading. Hua provides “a review of the conventional pipelining scheme,” referring to dividing a media presentation into multiple segments and playing Sn while S(n+1) is downloading. In Hua, the playback duration of Sn must “eclipse” the download time for S(n+1)  for the presentation to be continuously played back after the first segment of S0 finishes downloading.


IPR Petition

Google filed a petition for inter partes review (IPR) with the PTAB, arguing that the ‘806 patent is unpatentable on two grounds. First, Google alleged that claims 1-7 and 9-11 are anticipated by SMIL 1.0. Second, Google argued that even if SMIL 1.0 did not anticipate the claims, claims 1-11 would have been obvious over SMIL 1.0, because “pipelining was a well-known design technique that minimized the amount of time a user would have to wait to view a media presentation.” Google cited Hua and an expert declaration as authority for this statement.

Philips responded that Google could not point to how Hua would be combined with SMIL 1.0, nor rely on “conclusory statements of general knowledge” to supply a missing claim limitation. The PTAB construed the term “a given segment of the media presentation” to mean “a media presentation with multiple segments.” Therefore, the PTAB held, if the conditional statement of claim 1 -i.e., “if the determined file is one of a plurality of files required for the media presentation”- is always satisfied, the steps that follow are mandatory and limiting, and thus Google had not shown that any of the claims were anticipated. However, in turning to Google’s obviousness argument the PTAB concluded that Google had shown that claims 1-11 would have been obvious both in view of SMIL 1.0 and over SMIL 1.0 in view of Hua.

Addition of Ground for Institution Deemed Improper

In its appeal to the CAFC, Philips made three arguments challenging the PTAB’s ruling. First, Philips argued that the PTAB erred in instituting an IPR on the ground that the claims would have been obvious over SMIL 1.0 in view of Hua, because Google did not advance such a combination of the prior art in its petition for review. Second, Philips argued that the PTAB impermissibly relied on “general knowledge” to supply a missing claim limitation. Third, Philips argued that the PTAB’s obviousness finding is unsupported by substantial evidence.

To Philips’ first argument, the CAFC agreed with Philips. Citing SAS Inst. Inc. v. Iancu, the CAFC explained that:

[T]he statute envisions that a petitioner will seek an [IPR] of a particular kind – one guided by a petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based’ . . . rather than create (another) agency-led, inquisitorial process for reconsidering patents, Congress opted for a party-directed, adversarial process.

The CAFC continued, holding that the PTAB’s decision to institute an IPR on the additional ground that claims 1-11 would have been obvious based on a combination of prior art references not advanced in Google’s petition departed from the PTAB’s authorization under the statute. Relying on Anacor and Genzyme, Google argued that the PTAB did not need to adhere to the strict arguments in its petition if the PTAB provides reasonable notice of the invalidity arguments to the patent owner. The CAFC also rejected this argument, finding that reliance on these cases is misplaced because they do not concern PTAB discretion in instituting an IPR on grounds not raised in a petition.

General Knowledge of POSITA

The CAFC disagreed with Philips’ second argument that the PTAB erred in relying on “general knowledge” to supply a missing claim limitation. The CAFC found that Google properly alleged that even though SMIL 1.0 did not disclose all elements of the claimed invention, the differences between the claimed invention and SMIL 1.0 are such that the invention would have been obvious to one of ordinary skill in the art. Specifically, a skilled artisan would have been motivated to combine pipelining with SMIL 1.0. The CAFC also disagreed with Philips’ contention that the case was analogous with Arendi, where the PTAB impermissibly used conclusory statements and unspecific expert testimony to find a common sense limitation missing from the prior art. The CAFC clarified that in this case, the PTAB relied on expert evidence corroborated by Hua in concluding that pipelining was within the general knowledge of the skilled artisan.

Substantial Evidence

Lastly, the CAFC disagreed with Philips’ argument that substantial evidence did not support a finding that the claims would have been obvious over SMIL 1.0. The CAFC found that the PTAB sufficiently explained why SMIL 1.0 combined with pipelining discloses the limitations of claim 1, and permissibly relied on expert knowledge and Hua to find 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.” Unpersuaded by Philips’ counterarguments, the CAFC held that the PTAB properly relied on the disclosure of the ‘806 patent as evidence that a person of ordinary skill would have been able to use multithreaded environments to develop a simultaneous download and playback application, as the disclosure stated that “working with threads is a skill common for software engineers.” All the above considered, the CAFC held that the PTAB’s factual findings supported a determination that claims 1-11 of the ‘806 patent were unpatentable as obvious.


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Join the Discussion

One comment so far.

  • [Avatar for Anon]
    February 4, 2020 09:09 am

    Does the write-up here miss the nuance that Hua was NOT (technically) being used as an item of Prior Art?

    There is an important wrinkle here based on the distinction of how Hua is classified.