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Koninklijke Philips N.V. v. Google LLC

IPR Restriction to Patents/Publications Does Not Preclude Reliance on “General Knowledge” of POSITA

Koninklijke Philips N.V. v. Google LLC, __ F.3d __, 2020 WL ___ (Fed. Cir. Jan. 30, 2020) (PROST, Newman, Moore) (PTAB) (3 of 5 stars)

Fed Cir affirms IPR determination that Philips’ claims are unpatentable as obvious. Philips’ patent relates to the formation of media presentations using a control file to resolve playback format issues and to set up downloading a next media file concurrent with playback of the current one.

The Board erred by instituting IPR on a combination of references that petitioner Google did not advance (i.e., a combination of references that were in the petition as part of separate grounds, but not in the specific instituted combination). Analyzing SAS, 138 S. Ct. 1348 (2018), the opinion reasons that the PTO Director may not depart from the petition in this manner. Anacor Pharmaceuticals, 889 F.3d 1372 (Fed. Cir. 2018), and Genzyme Therapeutic Products, 825 F.3d 1360 (Fed. Cir. 2016), are not contrary because they related only to the Board’s use of evidence outside the petition, not institution on non-advanced grounds.

The Board did not err by relying on the “general knowledge” of a POSITA to supply a missing claim limitation. This was not incompatible with § 311(b)’s limitation of IPR to patents and printed publications. “[I]t does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” Op. at 12. Citing Dow Jones, 606 F.3d 1338 (Fed. Cir. 2010), and KSR, 550 U.S. 398 (2007), the opinion reasons that the obviousness inquiry necessarily takes into account the knowledge of a POSITA. Nor did the Board contravene Arendi, 832 F.3d 1355 (Fed. Cir. 2016), because the “general knowledge” asserted here was not by conclusory allegations, but by corroborated evidence that Philips did not rebut.

The opinion reviews the record; substantial evidence supported the Board’s determination. The Board did not err by relying in part on the disclosure of Philips’ patent itself to establish a reason for combination. Per PharmaStem Therapeutics, 491 F.3d 1342 (Fed. Cir. 2007), “it is appropriate to rely on admissions in a patent’s specification when assessing whether that patent’s claims would have been obvious.” Op. at 15.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS (YES); INSTITUTION DECISION; REASON TO COMBINE