Background
M&K Holdings owned U.S. Patent No. 9,654,785, which covers methods for encoding video data. Samsung petitioned for inter partes review (IPR) — an administrative proceeding at the Patent Trial and Appeal Board (PTAB) that allows parties to challenge a patent’s validity using prior art — arguing that several documents submitted to the Joint Collaborative Team on Video Coding (JCT-VC) anticipated or rendered obvious the patent’s claims. The JCT-VC is the international standards body that developed the High Efficiency Video Coding (HEVC) standard.
The critical question was whether these JCT-VC documents qualified as “printed publications” under 35 U.S.C. § 102 — meaning whether they were publicly accessible before M&K’s patent priority date. The documents had been submitted and distributed at quarterly JCT-VC meetings attended by 200 to 300 people, and were available on the JCT-VC conference website. PTAB found the documents were publicly accessible and therefore constituted prior art. M&K appealed.
The Court’s Holding
The Federal Circuit affirmed in part and vacated in part. The court held that substantial evidence supported the PTAB’s finding that the JCT-VC documents were publicly accessible. A document qualifies as a “printed publication” if persons of ordinary skill in the relevant field could have accessed it with reasonable diligence — formal library cataloging or wide public dissemination is not required.
Here, the JCT-VC conference proceedings were made available on the conference website and distributed to the hundreds of video coding engineers and researchers who attended the quarterly meetings. The court found that persons of ordinary skill in video coding technology — a field where participation in standards bodies is standard practice — could have located these documents through the JCT-VC website or by attending the conferences. The availability to that specialized community was sufficient to establish public accessibility. However, the court vacated the PTAB’s finding as to one claim (claim 3) due to inadequate analysis of the prior art mapping, and remanded for further proceedings on that claim.
Key Takeaways
- Technical documents submitted to recognized standards bodies and distributed at industry conferences can qualify as prior art “printed publications,” even without formal library indexing or wide public distribution.
- Public accessibility is measured relative to the field of ordinary skill — documents available to the relevant technical community suffice, even if the general public would have difficulty finding them.
- For video, wireless, and other technology standards (HEVC, Wi-Fi, 5G, Bluetooth), documents submitted during the standards-setting process are strong prior art candidates in IPR proceedings.
- Patent owners whose inventions relate to standardized technology should carefully audit the standards body record for potentially anticipatory submissions predating their priority date.
Why It Matters
Standards-essential patents (SEPs) — patents that cover technology required to implement industry standards like HEVC video coding, Wi-Fi, or 5G cellular — are among the most commercially valuable and heavily litigated patents. This decision confirms that the voluminous technical record created during the standards-development process is fair game as prior art in IPR challenges. Companies implementing standards and facing SEP assertions can use standards body documents as powerful invalidation tools.
More broadly, the decision reinforces that the “public accessibility” test for printed publications is context-sensitive. What matters is whether the relevant technical community — not the general public — could reasonably find the document. For specialized fields like video compression or wireless communications, where standards work is central to the profession, conference papers and working group submissions circulated among hundreds of engineers will typically clear the bar.