In Philips v. Google,1 the Federal Circuit held that (1) the Patent Trial and Appeal Board (PTAB) cannot institute inter partes review (IPR) on grounds not raised in the IPR petition, and (2) the PTAB can rely on the “general knowledge” of a person of skill in the art (POSITA) to supply a missing claim element. These two holdings may impact parties’ approaches in IPR proceedings. Petitioners should ensure that the petition clearly states each ground for institution and consider how to best establish the “general knowledge” of a POSITA in the relevant field. Patent owners should challenge institution on any grounds not raised in the petition and consider how to rebut a petitioner’s claims about the POSITA’s level of “general knowledge.”
In 2016, Google filed for inter partes review of U.S. Patent No. 7,529,806.2 The relevant claims defined a method for accessing digital content from a server.3 In two prior art methods—downloading and streaming—users had to either wait for a download to complete or use custom streaming software to interface with the server.4 The ’806 patent used a hybrid approach in which a “control information file” defines how the desired content is divided into “multiple alternative files,” and a user accesses the “control information file” to play a first “multiple alternative file” while downloading the next.5 This approach avoided both the delay associated with downloading the content as a single file and the custom streaming software required to interface with a server.6 The challenged method claim required downloading the “control information file,” identifying, downloading, and playing a first one of the “multiple alternative files,” and downloading another one of the “multiple alternative files” while the first file plays.7
The IPR petition identified two grounds for institution: (1) 35 U.S.C. § 102 in light of the “SMIL 1.0” specification, and (2) 35 U.S.C. § 103 in light of SMIL 1.0. The PTAB instituted on the two grounds raised, but also added a third ground: 35 U.S.C. § 103 in light of SMIL 1.0 and the Hua reference.8 The PTAB found the ’806 patent invalid based on the second and third grounds. For the second ground, SMIL 1.0 taught downloading and parsing a “control information file” to identify “multiple alternative files” for digital content, but it did not teach timing playback of one file relative to downloading another file.9 Hua, however, taught a “pipelining scheme” that divides digital content into multiple files and plays a first file while the next file downloads.10 The PTAB found, based on the Hua reference and expert testimony, that “pipelining” fell within the POSITA’s “general knowledge,” rendering the ’806 patent obvious in light of SMIL 1.0.11 In the third ground, the PTAB found the ’806 patent obvious based on a combination of SMIL 1.0 and Hua “for the same reasons” as those discussed for the second ground.12
The Federal Circuit considered two issues on appeal: (1) whether the PTAB could institute on grounds not raised in the petition (in the third ground), and (2) whether the PTAB could rely on the “general knowledge” of a POSITA to supply a missing claim element (in the second ground). The court held that the PTAB cannot institute on grounds not raised in the petition, so the PTAB erred in considering an obviousness combination of SMIL 1.0 and Hua.13 In limiting the PTAB to grounds stated in the petition, the Federal Circuit relied on the Supreme Court’s comments in SAS Institute v. Iancu on the statutory language of the America Invents Act (AIA).14 The AIA requires the PTAB to “determine whether to institute an inter partes review . . . pursuant to a petition,” which indicates a “binary choice” between instituting based on the grounds in the petition or not.15
Addressing the second issue on appeal, the Federal Circuit clarified that a petitioner can rely on the POSITA’s “general knowledge” to supply a missing claim limitation.16 The patent owner argued that the AIA limits inter partes review to prior art “patents or printed publications,” and “general knowledge” falls outside these two categories.17 The court looked instead to obviousness precedent, in which “the obviousness analysis requires an assessment of the . . . background knowledge” of a POSITA.18 Turning to the case at hand, the Federal Circuit agreed with the PTAB that the “pipelining” taught by the Hua reference fell within the POSITA’s “general knowledge.”19 The Federal Circuit affirmed based on the second ground raised in the petition, 35 U.S.C. § 103 in light of SMIL 1.0, with a POSITA’s general knowledge of pipelining supplying the claim elements not taught by SMIL 1.0.
Petitioners must ensure that grounds for institution are stated clearly, and patent owners should challenge improper grounds in institution decisions
Philips v. Google turns SAS Institute’s dicta into precedent: the PTAB can only institute on grounds raised in the petition. Petitioners hoping that the PTAB will lend a helping hand by instituting on additional grounds will be better off stating each ground for institution explicitly. And with a clear boundary around the PTAB’s discretion, patent owners should challenge any institution decision not limited to the grounds stated in the petition.
Petitioners should consider pleading grounds that rely on the POSITA’s “general knowledge,” and both parties should consider how to establish the “general knowledge”
Petitioners, in addition to clearly stating each ground for institution, may also maintain some flexibility throughout the proceeding by pleading grounds that rely on the POSITA’s “general knowledge.”20 For example, a petitioner raising an obviousness ground based on references X and Y may also consider an obviousness ground based on reference X, with reference Y establishing the POSITA’s “general knowledge.” The first approach—based on two references—may lock the petitioner into relying on those two references throughout the proceeding21 and permit the patent owner to challenge a combination of the references.22 The second approach, however, may give the petitioner flexibility in establishing the POSITA’s “general knowledge”23 and shift the focus from combining references to a POSITA’s knowledge of the more elementary claim limitations.24 Petitioners must take care, though, that introducing evidence of the POSITA’s “general knowledge” does not also introduce new arguments,25 and that evidence is introduced in a manner that gives the patent owner notice and an opportunity to respond.26
Petitioners should also consider the complexity of claim limitations argued to be within the POSITA’s “general knowledge” and make sure to offer sufficient evidence to establish that knowledge.27 And both parties to an IPR must decide which evidence best establishes the “general knowledge” in the field. Documentary evidence can lend credibility to expert testimony and provide examples that clarify the expert’s position.28 The parties may also dispute the level of abstraction at which the “general knowledge” is defined, and documentary evidence may support either a narrower or broader view.29
Philips v. Google’s holding that the PTAB can institute only on grounds raised in the petition follows from the Supreme Court’s comments on IPR institution in SAS Institute v. Iancu.30 The Federal Circuit’s discussion of how the PTAB can use “general knowledge” to find obviousness, however, may suggest new IPR strategies. Petitioners should both consider which grounds to plead and how to strengthen each ground with documentary evidence of the POSITA’s “general knowledge.” Patent owners, on the other hand, should limit review to only those grounds stated in the petition and prepare evidence to rebut or limit a petitioner’s claims regarding “general knowledge.” Patent owners must also challenge any PTAB findings based on new evidence of “general knowledge” for which the patent owner was not afforded notice and opportunity to respond.
1 Koninklijke Philips N.V. v. Google LLC, No. 2019-1177, 2020 WL 485909 (Fed. Cir. Jan. 30, 2020).
2 Id. at *2.
3 Id. at *1–2.
4 Id. at *1.
7 Id. at *1–2; U.S. Patent No. 7,529,806, col. 5 l. 45–67 (filed Nov. 4, 1999).
8 Google LLC v. Koninklijke Philips N.V., IPR 2017-00447, Paper 29, at 2 (P.T.A.B. Sept. 6, 2018).
9 Id. at 16–18.
10 Id. at 22–23.
11 Id. at 26–27 (noting that the petitioner provided “documentary evidence” in Hua and expert testimony to show that pipelining would have been well known to a POSITA).
12 Id. at 37–39.
13 Koninklijke Philips N.V. v. Google LLC, No. 2019-1177, 2020 WL 485909, at *4–5 (Fed. Cir. Jan. 30, 2020).
14 Id.; SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (“Nor does [the AIA] contemplate a petition that asks the Director to initiate whatever kind of inter partes review he might choose. Instead, the statute envisions that a petitioner will seek an inter partes review of a particular kind—one guided by . . . the grounds on which the challenge to each claim is based.”).
15 35 U.S.C. § 314(b); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018).
16 Philips v. Google, 2020 WL 485909, at *5–6.
17 Id. at *5; 35 U.S.C. § 314(b).
18 Philips v. Google, 2020 WL 485909, at *5 (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007)).
19 Id. at *6–7.
20 Philips v. Google provides another example of why a petitioner raising a Section 102 ground should consider raising a Section 103 ground for that same reference.
21 The PTAB will likely consider an obviousness challenge based on just one reference a new ground or a new argument when the ground raised in the petition relied on two references. Philips v. Google, 2020 WL 485909, at *5 (finding a new ground based on arguments relating to “a combination of references” not advanced in the petition); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366, 1369–70 (Fed. Cir. 2016) (affirming the PTAB’s refusal to consider a reply brief raising new arguments and references). An obviousness challenge based on a single reference and the POSITA’s “general knowledge,” however, may permit the petitioner to use the prior art as a whole to establish the “general knowledge.” Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366–67 (Fed. Cir. 2016) (permitting “the introduction of new evidence in the course of the trial” as long as “the opposing party is given notice of the evidence and an opportunity to respond to it”).
22 Admittedly, an obviousness challenge based on references X and Y also permits the PTAB to consider the “general knowledge” of a POSITA. But multiple references permit the patent owner to argue against their combination, whereas a ground relying on a single reference focuses the inquiry on combining the reference with “general knowledge.” Compare Philips v. Google, 2020 WL 485909, at *6–7 (describing the “relevant inquiry” as combining a reference with the POSITA’s “general knowledge”), with Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (evaluating whether a POSITA would have a motivation to combine two references with a reasonable expectation of success).
23 Philips v. Google, 2020 WL 485909, at *6–7; Genzyme, 825 F.3d at 1366 (holding that the PTAB’s final written decision was based on the same grounds set forth in its institution decision despite the fact that the Board’s decision cited references not specifically included in the combinations on which the PTAB instituted review).
24 Philips v. Google, 2020 WL 485909, at *6–7.
25 Compare Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380 (Fed. Cir. 2018) (“There is . . . no blanket prohibition against the introduction of new evidence during an inter partes review proceeding.”) with Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016) (refusing to consider new arguments presented in a reply brief).
26 5 U.S.C. §§ 554(b)-(c), 556(d). cf. Genzyme, 825 F.3d at 1365–66 (holding that additional evidence of the POSITA’s “general knowledge” was based on same grounds as those raised in petition, giving the patent owner notice and opportunity to respond).
27 Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (limiting the use of “common sense” in an obviousness inquiry, “especially when dealing with a limitation missing from the prior art references”).
28 Philips v. Google, 2020 WL 485909, at *6–7 (finding substantial evidence of obviousness based on both expert testimony and the Hua’ reference’s teaching on “pipelining”).
30 Id. at *4.
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