Philips owned a patent that claimed a method for downloading and streaming digital content for playback on a device. Google filed an IPR, and presented two grounds of unpatentability (anticipation and obviousness) based upon a reference and general knowledge regarding pipelining (i.e., simultaneous download and playback). For example, Google’s theory of obviousness was that a skilled artisan would have thought to add “pipelining” to the reference.
The PTAB instituted the IPR on three grounds of unpatentability, in which the third ground was developed by the PTAB and based upon a combination of references. The PTAB determined that the patent was not anticipated but was obvious over the single reference (Google’s ground) and the combination of references (PTAB’s ground).
Philips appealed, arguing that: (1) the PTAB erred by instituting IPR on its own ground of unpatentability (among others), (2) the PTAB erred in finding that the claims would have been obvious in view of the single reference because the PTAB relied on “general knowledge” to supply a missing claim limitation, and (3) the PTAB’s obviousness findings were not supported by substantial evidence.
Did the PTAB properly institute IPR on its ground of unpatentability?
Did the PTAB properly rely on evidence of a skilled artisan’s “general knowledge” to supply a missing claim limitation?
Did the PTAB properly find that the challenged claims would have been obvious? (continue reading)
Summary by: Paige Soon
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