In KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme Court indicated that general knowledge of a person having skill in the art may be used as part of an obviousness analysis. However, courts have been reluctant to apply “general knowledge” or “common sense” to an obviousness analysis because of the concern it may be used to gloss over actual analysis.
Koninklijke Philips N.V. v. Google LLC, Case 19-1177 (Fed. Cir. 2020), was an appeal to the Court of Appeals, Federal Circuit (“CAFC”) from the Patent Trial and Appeal Board (“PTAB”) in an inter partes review of U.S. Patent No. 7,529,806 (“‘806 patent”), to determine whether the use of general knowledge in an obviousness analysis was appropriate. The ‘806 patent is owned by Koninklijke Philips N.V. (“Philips”).
The ‘806 patent covers a hybrid method of downloading and streaming media files, by using a control file to automatically choose a player format and provide concurrent playback of downloaded files as subsequent files are downloaded. This method allegedly avoids the delays of downloading, because the next file is being downloaded as the current file is being played, and allegedly avoids the need for “two way intelligence” between the player and the source server, as in streaming.
Two prior art references were identified: 1) Synchronized Multimedia Integration Language 1.0 Specification (“SMIL 1.0”) and 2) Kien A. Hua et al., 2PSM: An Efficient Framework for Searching Video Information in a Limited-Bandwidth Environment, 7 Multimedia Systems 396 (1999) (“Hua”). The Hua article describes a process called “pipelining”.
Google LLC (“Google”) filed a petition for inter partes review alleging claims 1-7 and 9-11 as anticipated by SMIL 1.0. Google further stated that even if SMIL 1.0 did not anticipate any of the claims, claims 1-11 would nonetheless have been obvious due to SMIL 1.0 and the “general knowledge” of the person having ordinary skill in the art. Hua and an expert declaration were used to illustrate the skill in the art at the time. The PTAB instituted a review based on Google’s position and added a third ground for review of its own accord based on the obviousness of SMIL 1.0 in view of Hua.
The PTAB found that the claims were not anticipated but were obvious in view of SMIL 1.0 and obvious due to SMIL 1.0 in view of Hua. Philips appealed.
The CAFC reviewed the PTAB decision, finding that it was improper for the PTAB to institute an inter partes review on grounds not advanced by a petitioner. The third ground for obviousness was due to SMIL 1.0 in view of Hua was overturned because the PTAB cannot add a different inter partes review ground of its own.
What is significant is that the CAFC decided that knowledge of a skilled artisan is an important consideration for determining whether it would have been obvious to modify a patent or printed publication identified in an inter partes review. To perform an obviousness analysis knowledge of an artisan having ordinary skill must be known. KSR Int’l Co. v. Teleflex, Inc. at 401. The general knowledge of the skilled artisan is then used to determine whether the claimed invention is an obvious modification of the prior art. Evidence to support an argument for general knowledge may include expert testimony, patents, and/or printed publications.
In Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2013) (“Arendi”), the CAFC indicated that common sense should not be used as a gap filler for a missing limitation in a prior art reference instead of “reasoned analysis and evidentiary support.” In Arendi, the “common sense” argument was the result of conclusory statements. By contrast, expert testimony and the Hua article were used by Google to indicate that pipelining was known to a skilled artisan.
Google indicated that SMIL 1.0 did not disclose every element of the claimed invention. However, one skilled in the art would have known enough to provide the modifications to create the claimed invention. Expert testimony during the trial and the information contained in Hua indicate that a skilled artisan would further have been motivated to combine SMIL 1.0 and pipelining, and there would have been a reasonable expectation of success. To be clear, it is not the combination of SMIL 1.0 and Hua that are being used to determine obviousness, but the Hua article is used to show the state of general knowledge in the art.
In an inter partes review proceeding, a single prior art reference may be sufficient to show obviousness if supporting materials and expert testimony are provided to show that skilled artisans at the time of invention would have had the knowledge, motivation, and a reasonable expectation of success to make the invention based on the prior art.