Meeting documents from standard-setting organizations, or SSOs, which develop and publish technical standards, are often voluminous databases of information and disclosures relevant to developing technologies.

These SSO meeting documents can be powerful prior art to challenge patent validity in an inter partes review at the Patent Trial and Appeal Board, especially in light of the PTAB's recent increased scrutiny of prior art that is similar to prior art raised during prosecution or a previous proceeding at the U.S. Patent and Trademark Office.

Accordingly, petitioners are finding that SSO meeting document databases can be a fruitful source of potential prior art that may not have been considered in a previous PTO proceeding. However, these SSO meeting documents can only be relied upon when certain conditions are met, and we explore those conditions below.

Development and publication of a standard by an SSO is a significant undertaking that often takes years. For example, the Institute of Electrical and Electronic Engineers, or IEEE, is an SSO that develops and publishes various standards including certain standards for Wi-Fi and certain software standards.

Additionally, the 3rd Generation Partnership Project, or 3GPP, is an SSO that unites seven telecommunications standard development organizations around the world and develops and publishes cellular communication standards — e.g., 3G, 4G LTE or 5G standards.

During the development of a standard by an SSO like IEEE or 3GPP, a working group is typically formed to work on a specific project. Periodic meetings are held by the working group and numerous documents — e.g., member companies' proposals, draft technical specifications, member contributions and change requests, etc. — are presented and discussed in these meetings.

For example, in 3GPP, meeting documents are also called temporary documents or TDocs. In this article, we generally refer to these documents as meeting documents. Once consensus is reached within the working group, the draft standards are then proposed to a larger group for approval.

Many companies monitor the meeting documents for these SSOs and are concurrently pursing patent applications on related technologies. In this regard, the meeting documents of SSOs can be important sources of prior art for potential validity challenges to patents, such as in an inter partes review petition. However, establishing sufficient public availability of these documents can be an obstacle.

In Cradlepoint Inc. v. 3G Licensing SA, the petitioner successfully relied on meeting documents in 2020, namely a 3GPP technical specification and four 3GPP meeting documents, as prior art in an America Invents Act trial.

In effort to establish the public availability of the meeting documents, the petitioner submitted an expert declaration explaining that:

    The meeting documents were freely available on the 3GPP website before the priority date of the challenged patent so that any interested individual could download them without providing any login credentials or other exclusive access criteria; and
  • 3GPP used e-mail listservs to disseminate ideas and information broadly and subscription to the listserv was simple and open to any member of public.1

    • In addition, the petitioner proposed that a person of ordinary skill in the art, or POSITA, "would also have familiarity with the 3GPP technical specifications."2

    The patent owner challenged the public availability of the cited 3GPP meeting documents. The patent owner argued that a POSITA would have not been familiar with the "inner-workings of 3GPP or its document storage processes," and "familiarity with the labyrinthine structure of 3GPP's structure and database system."3

    The PTAB rejected the patent owner's arguments. The PTAB adopted the petitioner's formulation of the POSITA because the challenged patent "cites a voluminous amount of 3GPP prior art."4

    The PTAB concluded that a POSITA "would not need to be 'familiar with the inner-workings of 3GPP,' and that the 'document storage processes' were not a 'labyrinthine,' but rather a fairly simple set of folders neatly organized on the website by subject matter and meeting date," and that the "3GPP Technical Specification Groups and Working Groups [were] clearly organized and explained, not 'byzantine'"5.

    The patent owner further argued that its expert attempted to locate the references using the 3GPP email exploder archive and the listserv archive but could not locate the references.6

    The PTAB rejected this argument and stated that "the email exploder and listserv appear to have been intended primarily for contemporaneous distribution of information, not for later research and retrieval."7

    The PTAB ultimately determined in its final written decision that the challenged claims were not patentable over the cited prior art. The patent owner has appealed the PTAB's decision and oral arguments are scheduled in the appeal later this month.

    In Samsung Electronics Co. Ltd. v. M&K Holdings Inc., the U.S. Court of Appeals for the Federal Circuit in 2021 affirmed the PTAB's holding that the petitioner sufficiently proved the public availability of certain meeting documents, namely two member proposals that were discussed at the meetings of the Joint Collaborative Team on Video Coding, or JCT-VC.

    JCT-VC is a group of video coding experts from the International Telecommunication Union Telecommunication Standardization Sector's Video Coding Expert Group, and the International Organization for Standardization and International Electrotechnical Commission's Moving Picture Expert Group created in 2010 to develop new-generation video coding standards.

    The Federal Circuit agreed in 2019 with the PTAB's determination that the meeting documents were sufficiently established as publicly accessible, as they were discussed at JCT-VC meetings attended by 200-300 interested persons without any expectation of confidentiality, and posted on the organization's website before the priority date of the patent at issue.8

    Further, it was noted that JCT-VC is a prominent standards-setting organization.9 In response to arguments regarding the lack of a sufficient search capability on the JCT-VC website, the Federal Circuit stated that "a website's landing page is not required to have search functionality," and that a "factor relevant to public accessibility is whether a repository indexes its documents or otherwise categorizes them by subject matter."10

    In addition to telecommunication SSOs, the PTAB has also addressed the meeting documents issue in the context of software standards.

    In Microsoft Corp. v. IPA Technologies Inc., one of the prior art references relied on by the petitioner was a draft specification discussed in the meetings of the Foundation for Intelligent Physical Agents. FIPA is a Swiss SSO formed in 1996 to produce software standards.

    FIPA joined the IEEE Computer Society and became part of the IEEE in 2005. In this proceeding, the patent owner did not raise the public availability issue prior to institution but raised it for the first time in the patent owner's response.

    The PTAB found that public accessibility was sufficiently established for the meeting document at issue on the basis that the draft specification was discussed in FIPA meetings, AgentWeb newsletters announced the draft specification and provided link to access them, and the AgentWeb software agents mailing list also provided information regarding the draft specification.11

    In some cases, petitioners' efforts to prove the public availability of SSO's meeting documents were not successful. For example, in Nokia of America Corp. v. IPCom GmbH & Co. KG, the petitioner challenged the claims of the patent at issue using two grounds: a first ground based on a 3GPP technical specification and a 3GPP meeting document; and a second ground based on two U.S. patents.12

    The patent owner challenged the public availability of the 3GPP meeting document in its patent owner preliminary response. The PTAB agreed with the patent owner's arguments and found that the petitioner had not sufficiently shown a reasonable likelihood that the meeting document was publicly accessible.13

    The PTAB concluded last year that the petitioner presented no evidence that the meeting document was disseminated to the public via email because the "email that purportedly sent the final meeting report does not indicate to whom or how many people it was sent," and "what the email attachment contained ... is not evident from the email itself."14
    The PTAB also disagreed that the meeting document was publicly accessible through the 3GPP FTP server because the server "did not contain an index or catalogue or other tool for customary and meaningful research."15

    In light of the above, petitioners attempting to establish the public accessibility of a meeting document should strive to provide as many supporting facts as possible related to the meeting documents, the meetings, the websites and the SSO.

    Furthermore, the petitioners will benefit from engaging an expert who has personal experience with the SSO to which the meeting document at issue relates.

    Petitioners should also consider proposing a heightened level for a POSITA, e.g., requiring knowledge with the relevant standard and its development process. Moreover, petitioners may want to include additional grounds that do not rely on the SSO's meeting documents.

    On the other side, patent owners should consider challenging the public availability of the SSO's meeting documents at an early stage of the inter partes review proceedings, i.e., before institution. Like petitioners, patent owners will benefit from engaging an expert who has personal experience with the SSO at issue.

    Footnotes

    1. IPR2020-01103, Declaration of Craig Bishop, Exhibit 1003, June 26, 2020.

    2. Id., at 40.

    3. IPR2020-01103, Patent Owner's Response, Paper 28, at 7-11, April 20, 2021.

    4. IPR2020-01103, Final Written Decision: original, Paper 46, at 4, January 18, 2022.

    5. Id., at 10, 12.

    6. IPR2020-01103, Patent Owner's Response, Paper 28, at 11, April 20, 2021.

    7. IPR2020-01103, Final Written Decision, Paper 46, at 13, January 18, 2022.

    8. Samsung Electronics Co., Ltd. v. M & K Holdings Inc. 985 F.3d 1376, at 1379-1383 (Fed. Cir. 2019).

    9. Id.

    10. Id., at 1381-1382.

    11. IPR2019-00837, Final Written Decision, Paper 42, October 22, 2020.

    12. IPR2021-00533, Paper 3, February 12, 2021.

    13. Id., Decision Granting Institution of Inter Partes Review, Paper 10 at 31, August 12, 2021.

    14. Id. at 30.

    15. Id.

    The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mr Trenton Ward
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
901 New York Avenue, NW
Washington, DC
20001-4413
UNITED STATES
Tel: 2024084000
Fax: 2024084400
E-mail: info@finnegan.com
URL: www.finnegan.com

© Mondaq Ltd, 2023 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com, source Business Briefing