Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd. , 929 F.3d 1363 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
SAMSUNG ELECTRONICS CO., LTD.,
Appellant
v.
INFOBRIDGE PTE. LTD.,
Appellee
______________________
2018-2007, 2018-2012
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
00099, IPR2017-00100.
______________________
Decided: July 12, 2019
______________________
STEPHEN BLAKE KINNAIRD, Paul Hastings LLP, Wash-
ington, DC, argued for appellant. Also represented by
NAVEEN MODI, QUADEER AHMED, JOSEPH PALYS, IGOR
VICTOR TIMOFEYEV, MICHAEL WOLFE, DANIEL ZEILBERGER.
MICHAEL NEWMAN, Mintz, Levin, Cohn, Ferris, Glovsky
and Popeo, PC, Boston, MA, argued for appellee. Also rep-
resented by WILLIAM MEUNIER, KONGSIK KIM, MICHAEL
TIMOTHY RENAUD.
______________________
Before NEWMAN, SCHALL, and O’MALLEY, Circuit Judges.
2 SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD.
O’MALLEY, Circuit Judge.
In two inter partes review proceedings requested by
Samsung, the Patent Trial and Appeal Board (“the Board”)
upheld all challenged claims of U.S. Patent 8,917,772 (“the
’772 patent”), which is owned by Infobridge. The Board up-
held the claims because it found that Samsung failed to
show that a certain prior art reference was publicly acces-
sible before the ’772 patent’s critical date and thus could
not be considered prior art. Samsung appeals the Board’s
decisions, insisting that it has standing to do so and argu-
ing, among other things, that the Board applied the wrong
legal standard in assessing public accessibility. We agree
with Samsung on both issues. We therefore vacate the
Board’s decisions and remand for further consideration.
I. BACKGROUND
A. The Technology
The ’772 Patent, titled “Method of Constructing Merge
List,” generally relates to encoding and decoding video
data. Both parties agree for purposes of this appeal that
the patented methods are essential to the High Efficiency
Video Coding standard (“the H.265 standard”).
B. The Prior Art
The sole prior art reference at issue on appeal is Work-
ing Draft 4 of the H.265 standard (“the WD4 reference”),
which was developed by the Joint Collaborative Team on
Video Coding (“JCT-VC”). Samsung Elecs. Co., Ltd v. Info-
bridge Pte. Ltd, IPR2017-00099, 2018 WL 1940480 at *2
(P.T.A.B. April 23, 2018) (“Final Written Decision”). 1
1 We will refer to the final written decision from
IPR2017-00099 in this opinion because the final written
decisions in both proceedings are substantially simi-
lar. See also Samsung Elecs. Co., Ltd. v. Infobridge Pte.
SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD. 3
The key question here is whether the WD4 reference was
publicly accessible prior to the ’772 patent’s critical date.
Samsung points to three examples of disclosures that it
claims, independently or together, establish public accessi-
bility. Each are discussed below.
1. JCT-VC Meetings
JCT-VC members met to discuss the H.265 standard,
then under development, during a July 2011 meeting in To-
rino, Italy (“the Torino meeting”). This meeting included
about 250 participants, ranging from academics to repre-
sentatives from various technology companies. One of the
“primary goals” for the Torino meeting was developing the
WD4 reference. J.A. 5327. In November 2011, at the next
JCT-VC meeting in Geneva, Switzerland (“the Geneva
meeting”), the WD4 reference was discussed and ulti-
mately “approved.” J.A. 5587.
2. JCT-VC and MPEG Websites
During this same time, the JCT-VC maintained a web-
site allowing users to access various JCT-VC materials.
The WD4 reference was uploaded to the JCT-VC’s website
on October 4, 2011. Final Written Decision, 2018 WL
1940480 at *5. To access the WD4 reference, users needed
to follow at least four steps. First, they had to navigate to
the JCT-VC website. J.A. 7026. Next, they had to select a
menu option to view information about “All meetings” held
by the JCT-VC. J.A. 7029. Then a user would need to se-
lect “Torino” from the list of available meeting options,
which were not identified by subject matter. Id. At this
point, the user would see a list of “hundreds” of documents
organized by an identifying number rather than subject
matter. Final Written Decision, 2018 WL 1940480 at *4;
see also J.A. 7034–7081 (listing the documents). From this
Ltd., IPR2017-00100, 2018 WL 1936069 (P.T.A.B. April 23,
2018).
4 SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD.
list, a user would need to select the WD4 reference, titled
“WD4: Working Draft of High-Efficiency Video Coding.”
J.A. 7080.
The WD4 reference was also uploaded to a website
maintained by the Moving Picture Expert Group
(“MPEG”), a parent organization of the JCT-VC, on Octo-
ber 4, 2011. Final Written Decision, 2018 WL 1940480 at
*2–3, *5. The MPEG website was arranged in a manner
similar to the JCT-VC website, i.e., a user would need to
navigate to the relevant meeting and then select the rele-
vant document. Id. at *8–9. But, unlike the JCT-VC web-
site, the MPEG website required users to have a login and
password to access materials. Id. at *7.
3. JCT-VC Listserv
On October 4, 2011, the same day it was uploaded to
the Internet, Benjamin Bross—the lead author of the WD4
reference—emailed the reference to a JCT-VC listserv.
J.A. 6377. According to Mr. Bross, the listserv included
JCT-VC members who had attended the Torino meeting as
well as other “interested individuals.” J.A. 7947. Mr.
Bross’s email included a download link for the WD4 refer-
ence. Final Written Decision, 2018 WL 1940480 at *9.
C. The Board’s Decisions
Samsung filed two inter partes review petitions chal-
lenging claims 1–7 (IPR2017-00099) and claims 8–9
(IPR2017-00100) of the ’772 patent on October 17, 2016.
The Board instituted as to all challenged claims. In both
proceedings, the Board’s institution decisions relied on
prior art combinations including the WD4 reference. In its
final written decisions, however, the Board concluded that
the WD4 reference was not publicly accessible prior to the
’772 patent’s critical date and therefore could not be prior
art. Id. at *10.
As to the JCT-VC website, the Board concluded that
there was “insufficient competent evidence” to show that a
SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD. 5
person of ordinary skill in the art “would [have] know[n] to
check the JCT-VC site for information of relevance to the
art.” Id. at *5. Although Samsung offered testimony from
Mr. Bross on this point, the Board rejected his testimony
as “conclusory and insufficiently factually supported” be-
cause Mr. Bross could not testify about whether others
would have navigated to the JCT-VC website to learn about
developments in video coding. Id. at *6. The Board there-
fore found that Samsung could not “establish that WD4
was accessible to anyone other than members of JCT-VC”
during the relevant time period. Id. The Board went on to
explain that, assuming a person of ordinary skill might
have known about the JCT-VC website, there was no evi-
dence that such a person would have located the WD4 ref-
erence on the website by exercising reasonable diligence.
Id. at *7 (“Although the JCT-VC site was organized in a
hierarchical manner, the evidence does not establish WD4
was indexed in a manner that one ordinarily skilled in the
art, exercising reasonable diligence, could locate it.”).
The Board reached the same conclusion with respect to
the MPEG website for essentially the same reasons. Id. at
*7–9. For example, the Board again faulted Samsung for
offering only “conclusory and factually unsupported” asser-
tions that those skilled in the art were aware of the MPEG
website. Id. at *8. The Board also found that, even if some-
one could have found the MPEG website, they would not
have been able to reasonably find the WD4 reference. Id.
(“[W]e also find Samsung has failed to present evidence
that a person interested and skilled in the art could rea-
sonably have found WD4 on the MPEG site in October
2011, even if the user had access and knew the reference
was there.”).
As to the listserv email sent by Mr. Bross, the Board
found Mr. Bross’s testimony that the email was sent to in-
dividuals outside the JCT-VC as “nothing more than con-
jecture and speculation.” Id. at *9. The Board went on to
conclude:
6 SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD.
We find Mr. Bross’s email to the JCT-VC [listserv]
was, at best, a limited distribution of a link to the
WD4 document information webpage to a select
group, the members of JCT-VC and perhaps others
who may have opted into the reflector. We also find
Mr. Bross’s testimony is insufficient to establish
that the e-mail with the link to the WD4 document
information webpage was generally disseminated
to persons interested and ordinarily skilled in the
art. “[T]his record does not evince that [WD4] was
accessible to anyone other than the [JCT-VC], thus
further suggesting an absence of actual public ac-
cessibility.”
Id. at *9 (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,
511 F.3d 1186, 1196 (Fed. Cir. 2008)) (first alteration
added).
The Board did not address whether the WD4 reference
was publicly accessible because it had been disseminated
at the Torino or Geneva meetings.
Samsung timely appealed the Board’s final decisions.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II. DISCUSSION
Samsung’s sole argument on appeal is that the Board
erred by finding that the WD4 reference was not publicly
accessible prior to the ’772 patent’s critical date. We turn
to this argument below after addressing whether Samsung
has standing to bring this appeal in the first place.
A. Standing
Federal courts exercise their judicial power according
to limits imposed by Congress and the Constitution.
Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1546–47 (2016).
These constitutional limits establish “the category of liti-
gants empowered to maintain a lawsuit in federal courts to
seek redress for a legal wrong.” Id. at 1547. And they apply
SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD. 7
at every stage of a case before a federal court, including on
appeal. Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168,
1171–72 (Fed. Cir. 2017). To clear this constitutional
threshold, the party seeking to invoke our judicial power
must show that it has suffered a “concrete and particular-
ized” injury that is either actual or imminent. Lujan v.
Defs. of Wildlife, 504 U.S. 555, 560–61 (1992). It must also
show that this injury is fairly traceable to its adversary and
likely to be redressed by a favorable ruling. Id.
We have “an independent obligation to assure that
standing exists, regardless of whether it is challenged by
any of the parties.” Summers v. Earth Island Inst., 555
U.S. 488, 499 (2009). Here, Samsung raised the issue of
standing in its opening brief. Infobridge did not contest
that Samsung has standing in response, but we think it is
necessary to address the question.
Samsung’s standing argument turns on its relationship
to Infobridge and the ’772 patent. According to uncontro-
verted evidence provided by Samsung, the ’772 patent is
licensed as part of a “pool” of patents, including some
owned by Samsung, that have been declared essential to
the H.265 standard. Appellant’s Br. 59. Licensees pay a
fixed royalty for the pooled patents and then members who
own patents in the pool divide that royalty based on the
number of patents in the pool. By the express terms of the
license, if a pool patent is declared invalid, it is removed
from the pool and the other members thereafter receive a
higher proportion of the fixed royalty. Members of the pool,
like Samsung, therefore stand to gain if another pool pa-
tent is invalidated and removed from the pool.
Against this backdrop, Samsung argues that it is being
“depriv[ed]” of royalty payments and that “[t]his depriva-
tion of royalties is the kind of ‘concrete and particularized’
economic injury that satisfies the Article III requirement.”
Id. (quoting Phigenix, 845 F.3d at 1171). We agree with
Samsung that, under the facts and circumstances of this
8 SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD.
case, its injury confers Article III standing. See, e.g., Chou
v. Univ. of Chicago, 254 F.3d 1347, 1359 (Fed. Cir. 2001)
(“If Chou has indeed been deprived of an interest in pro-
ceeds from licensing the invention . . . then she will have
suffered an injury-in-fact, i.e., the loss of those benefits”).
This injury can be traced directly to the validity of Info-
bridge’s patent and would be redressed by a favorable de-
cision for Samsung. While other licensing and royalty
structures might compel a different result where other
standard-essential patents are involved, the unique pool li-
cense here satisfies us that Samsung has standing in this
appeal.
Accordingly, we proceed to the merits of Samsung’s ap-
peal.
B. Public Accessibility
A person is not entitled to a patent if their invention
was “described in a printed publication . . . more than one
year prior to the date of the[ir patent] application.”
35 U.S.C. § 102(b) (2006). 2 We have read this statutory
text as imposing two requirements: (1) that a putative prior
art reference be printed and (2) that the reference be pub-
lished, i.e., accessible to the public. In re Wyer, 655 F.2d
221, 225 (CCPA 1981). We have emphasized, however,
that what constitutes a “printed publication” must be de-
termined in light of the technology employed, id. at 226,
and that it is public accessibility that is the “touchstone,”
Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347,
2 In 2011, Congress amended § 102 as part of the
America Invents Act (“AIA”). See Leahy-Smith America
Invents Act, Pub. L. No. 112-29, § 3(b)(1), 125 Stat. 284,
285–86 (2011). This opinion applies the pre-AIA version
of § 102 because the ’772 patent does not contain any
claims or reference to claims that have an effective filing
date on or after March 16, 2013.
SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD. 9
1355 (Fed. Cir. 2018) (internal quotation marks omitted).
A reference is considered publicly accessible if “persons in-
terested and ordinarily skilled in the subject matter or art,
exercising reasonable diligence, can locate it.” Acceleration
Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772
(Fed. Cir. 2018). In some cases, this inquiry is straightfor-
ward. But in other cases, public accessibility depends on a
careful, case-by-case examination of how a particular ref-
erence was disseminated, to whom, for how long, and under
what circumstances. Jazz, 895 F.3d at 1357.
When a reference is uploaded to a website or deposited
in a library, the fact that the reference is indexed or cata-
loged in some way can indicate that it is publicly accessible.
In Acceleration Bay, for example, the reference at issue was
uploaded to a university website. 908 F.3d at 773. While
this made the work technically accessible—someone could
theoretically find it on the Internet—we explained that
“public accessibility requires more than technical accessi-
bility.” Id. (internal quotation marks omitted). And while
the website indexed references “by author and year,” we
agreed with the Board that this did not mean the reference
at issue had been “meaningfully indexed such that an in-
terested artisan exercising reasonable diligence would
have found it.” Id. at 774; see also SRI, 511 F.3d at 1196
(“[T]he FTP server did not contain an index or catalogue or
other tools for customary and meaningful research.”).
On this record, we affirmed the Board’s finding that the
reference was not publicly accessible even though it had
been uploaded to a website.
Similarly, in Voter Verified, Inc. v. Premier Election So-
lutions, Inc., 698 F.3d 1374 (Fed. Cir. 2012), there was also
no evidence that the reference had been meaningfully in-
dexed or cataloged. But there was “uncontested evidence”
that “a person of ordinary skill interested in [the relevant
subject matter] would have been independently aware of
[the website]” and that “such an interested researcher
would have found [the reference] using that website’s own
10 SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD.
search functions and applying reasonable diligence.” 698
F.3d at 1381; see also Jazz, 895 F.3d at 1359 (noting “un-
challenged findings” that a person of ordinary skill in the
relevant art “would have had reason to” find the website at
issue). In view of these facts, among others, we affirmed a
district court’s conclusion that the reference was publicly
accessible. Voter Verified, 698 F.3d at 1381. Thus, while
indexing is not required to show that a work is publicly ac-
cessible, some evidence that a person of ordinary skill could
have reasonably found the website and then found the ref-
erence on that website is critical. Acceleration Bay, 908
F.3d at 773.
To the extent the Board resolves factual issues in de-
termining that a reference is or is not prior art under § 102,
its factual findings are reviewed for substantial evidence.
Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1339,
1348 (Fed. Cir. 2016). “[Substantial evidence] means—and
means only—such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Biestek
v. Berryhill, 139 S. Ct. 1148, 1154 (2019) (internal quota-
tion marks omitted). The ultimate question of whether a
reference is prior art under § 102(b), however, is a legal
question we review de novo. Blue Calypso, 815 F.3d at
1339, 1348.
Samsung argues that the WD4 reference was publicly
accessible because it was discussed at various JCT-VC
meetings, uploaded to the JCT-VC and MPEG websites,
and emailed to the JCT-VC listserv. We address each ar-
gument below.
1. JCT-VC Meetings
Samsung argues that the WD4 reference became pub-
licly accessible because it was developed at a “prominent
international conference,” Appellant’s Reply Br. 15, and
was distributed to attendees, id. at 12–15; Appellant’s Br.
32–36. Infobridge responds that Samsung actually argues
distribution of the WD4 reference at the Torino and Geneva
SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD. 11
meetings, an argument that Infobridge contends Samsung
has waived. To the extent Samsung can be understood to
be arguing distribution of the WD4 reference at the Torino
and Geneva meetings, we agree the argument was waived.
Before the Board, Samsung did not argue that the WD4
reference was publicly accessible because it was discussed
at the Torino meeting or disseminated at the Geneva meet-
ing. In fact, Samsung never mentioned the Geneva meet-
ing. To the extent Samsung mentioned the Torino meeting,
moreover, it was related to the JCT-VC website and
Mr. Bross’s email. J.A. 132–39. Samsung conceded as
much at oral argument. See Oral Arg. at 1:23–54
(“Q. I thought it was pretty clear from your reply brief that
you had backed away [from relying on the Torino meeting]?
A. We have never taken the position before the Board or
here that there was a distribution of WD4 at the Torino
meeting . . . . Q. But even as to the Geneva meet-
ing . . . . you never relied on that alone? A. We are not re-
lying on the Geneva meeting . . . .”), available at
http://oralarguments.cafc.uscourts.gov/de-
fault.aspx?fl=2018-2007.mp3. Thus, Samsung waived any
separate argument on appeal that the WD4 reference was
publicly accessible because it was disseminated at the To-
rino or Geneva meetings. See MCM Portfolio LLC v.
Hewlett-Packard Co., 812 F.3d 1284, 1294 n.3 (Fed. Cir.
2015) (deeming arguments not presented to the Board
waived on appeal); Novartis AG v. Torrent Pharm. Ltd., 853
F.3d 1316, 1330 (Fed. Cir. 2017) (same).
Alternately, we agree with Infobridge that, if not
waived, any argument based upon distribution of the WD4
reference at the Torino and Geneva meetings is without
merit. The WD4 reference was not created until after the
Torino meeting. J.A. 7949. The reference therefore could
not have been circulated to conference attendees at the
meeting itself. Moreover, Samsung conceded at oral argu-
ment that the Geneva meeting occurred after the relevant
critical date. Oral Arg. at 1:41–54 (noting that the Geneva
12 SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD.
meeting occurred “a few days after the one-year period”).
Thus, even if the disclosure at that meeting could establish
public accessibility, it would not establish that the WD4
reference could serve as prior art here.
2. JCT-VC and MPEG Websites
To establish that the WD4 reference was publicly ac-
cessible once it was uploaded to the JCT-VC website, Sam-
sung provided a declaration from Mr. Bross where he
testified as follows:
[B]ased on my knowledge and recollection, given
the prominence of the JCT-VC in the video coding
industry, persons interested in tracking the devel-
opments of the latest video coding standard would
regularly visit the JCT-VC site to ensure that prod-
ucts and services they were developing were con-
sistent with the HEVC Standard under
development.
Final Written Decision, 2018 WL 1940480 at *5–6 (quoting
J.A. 7942). The Board rejected this testimony as “conclu-
sory and insufficiently factually supported.” Id. at *6. Ac-
cording to the Board, Mr. Bross had no basis to say whether
others “regularly visit[ed]” the JCT-VC website or thought
it was “prominen[t].” Id.
Samsung also argued that Infobridge’s expert, Dr.
Furht, supported Mr. Bross’s testimony. Id. But the Board
rejected this characterization of Dr. Furht’s testimony. Id.
As the Board explained, Dr. Furht acknowledged that he
was “probably aware,” before June 2013, that efforts were
being made to develop the H.265 standard. Id. The Board
concluded that “this testimony [was] not relevant or proba-
tive of what persons of skill in the video coding art in gen-
eral knew about WD4” or the JCT-VC website. Id.
Having rejected Mr. Bross’s testimony, and without ad-
ditional support, the Board concluded that Samsung failed
to show that ordinarily skilled artisans “who were not part
SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD. 13
of JCT-VC” would have known about or found the JCT-VC
website. Id. On this basis, the Board found that Samsung
“d[id] not establish that [the] WD4 [reference] was accessi-
ble to anyone other than members of JCT-VC.” Id.
The Board also found that a skilled artisan would not
have been able to locate the WD4 reference on the JCT-VC
website—even assuming the JCT-VC website itself was ac-
cessible—by exercising reasonable diligence. Id. at *7.
To support this conclusion, the Board walked through the
steps that a person would have to go through to find the
WD4 reference on the JCT-VC website. Id. As the Board
explained, “identifying a meeting location was key to navi-
gating the JCT-VC site.” Id. In other words, if a person
did not know to search for the WD4 reference by looking
under the “Torino” folder—named for the Torino meeting—
then a person would not have found the WD4 reference. Id.
But the Board noted that there was “no evidence” anyone,
outside those participating in the JCT-VC meetings, would
have found “cities . . . helpful in any respect in locating a
document on the site.” Id. This difficulty was compounded
by the fact that Samsung presented “no evidence that one
could search for or locate [the] WD4 [reference] based on its
subject matter.” Id. The Board therefore concluded that
Samsung failed to show that the WD4 reference was pub-
licly accessible. Id.
Samsung argues that the Board failed to consider
whether access by members of the JCT-VC could make the
WD4 reference publicly accessible. Appellant’s Br. 45
(“The Board improperly required Samsung to prove access
outside the JCT-VC . . . membership . . . .” (emphasis
added)). This error is critical, Samsung insists, because the
JCT-VC was composed of more than 250 members who
were skilled artisans following the development of H.265
and video coding in general. Id. According to Samsung,
sharing the WD4 reference among JCT-VC members is like
an academic presenting a paper at a conference, which we
14 SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD.
have said can make a work publicly accessible. Id. at 44
(collecting cases).
We are not persuaded by Samsung’s analogy. Like the
Board, we find SRI is instructive. There, the reference at
issue was emailed to the organizer of an upcoming sympo-
sium, Dr. Bishop. SRI, 511 F.3d at 1190. Based on that
record, the district court concluded on summary judgment
that the email made the work publicly accessible. Id. at
1194. On appeal, we remanded based on various disputed
facts. As relevant here, we noted that the evidence sug-
gested “only one non-SRI person, Dr. Bishop, knew about
the availability of [the reference].” Id. at 1196 (citing Ap-
plication of Bayer, 568 F.2d 1357 (CCPA 1978)). This “mil-
itate[d] against a finding of public accessibility.” Id. at
1197. We reached a similar result in Bayer, where the ref-
erence at issue, a student thesis, was only accessible to
members of a faculty review committee. 568 F.2d at 1361
(concluding that “[a]ccessibility to appellant’s thesis by the
three members of the graduate committee under the cir-
cumstances of the present case” did not demonstrate that
the work was publicly accessible); see also SRI, 511 F.3d at
1196 (noting the similarity between “only one non-SRI per-
son” having access to a reference and “the knowledge of the
thesis’s availability by the three professors in Bayer”).
Taken together, these cases suggest that a work is not
publicly accessible if the only people who know how to find
it are the ones who created it. This is why SRI focused on
the knowledge of those outside the authoring organization
and why Bayer discounted the knowledge of various profes-
sors on a faculty committee reviewing student theses.
To hold otherwise would disincentivize collaboration and
depart from what it means to publish something.
The Board’s analysis is consistent with this principle
and its underlying conclusions are supportable. Unlike the
conference attendees in GoPro, Inc. v. Contour IP Holding
LLC, 908 F.3d 690 (Fed. Cir. 2018) or Medtronic, Inc. v.
SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD. 15
Barry, 891 F.3d 1368 (Fed. Cir. 2018), JCT-VC members
were part of ongoing, collaborative efforts to draft the WD4
reference. For example, Mr. Bross testified that the WD4
reference was “developed by the Joint Collaborative Team
on Video Coding (JCT-VC).” J.A. 7936; see also J.A. 5326
(noting that “[t]he JCT-VC produced . . . the HEVC specifi-
cation Working Draft 4 (WD4)”). Even if Mr. Bross was the
lead author of the WD4 reference, we cannot say on this
record that the Board erred in treating the other JCT-VC
members who knew about this ongoing project like the fac-
ulty advisers in Bayer or in-house employees in SRI. The
Board therefore properly focused on whether those outside
of the JCT-VC knew about the JCT-VC website in consid-
ering whether posting the WD4 reference on the website
made it publicly accessible.
Samsung also argues that the Board’s factual findings
about the website, and the accessibility of the WD4 refer-
ence on the website, were not supported by substantial ev-
idence. We disagree. Samsung did not offer evidence,
apart from the speculation of Mr. Bross, that a person of
ordinary skill, exercising reasonable diligence, would have
located the JCT-VC website or even known to look for it.3
Final Written Decision, 2018 WL 1940480 at *5–6. That
sets this case apart from Voter Verified and Jazz. Cf. Voter
Verified, 698 F.3d at 1381 (noting uncontested evidence
that persons of ordinary skill in the art knew about the
3 Samsung argues that Mr. Bross’s testimony was
“uncontested” and thus had to be accepted. Appellant’s Br.
at 49. But the Board is not obligated to accept a witness’s
speculation as true. See, e.g., 37 C.F.R. § 42.62. To the ex-
tent Samsung argues that the Board erred by excluding the
testimony as speculative, moreover, we see no basis to say
that the Board abused its discretion. See Intelligent Bio-
Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367
(Fed. Cir. 2016).
16 SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD.
website); Jazz, 895 F.3d at 1359 (same). And, as the Board
explained in detail, even a person who found the JCT-VC
website lacked a reasonable way of locating the WD4 refer-
ence unless they already knew what to look for and where
to look for it. Id. at *7. This supports the Board’s conclu-
sion that the WD4 reference would not have been reasona-
bly accessible even if a skilled artisan knew about the JCT-
VC website. See Bayer, 568 F.2d at 1361 (“[S]ince appel-
lant’s thesis could have been located in the university li-
brary only by one having been informed of its existence by
the faculty committee, and not by means of the customary
research aids available in the library, the ‘probability of
public knowledge of the contents of the [thesis],’ was virtu-
ally nil.” (internal citation omitted)); In re Cronyn, 890 F.2d
1158, 1161 (Fed. Cir. 1989); Acceleration Bay, 908 F.3d at
773. Samsung’s contrary argument simply asks us to re-
weigh the evidence in its favor. We decline to do so. Re-
gents of Univ. of California v. Broad Inst., Inc., 903 F.3d
1286, 1294 (Fed. Cir. 2018) (“It is not our role to ask
whether substantial evidence supports fact-findings not
made by the Board, but instead whether such evidence sup-
ports the findings that were in fact made. Here, we con-
clude that it does.”).
Samsung’s remaining arguments regarding the web-
site are similarly unavailing. For example, Samsung in-
sists that the Board required it to show that the JCT-VC
website was “advertised outside of” JCT-VC. Appellant’s
Br. 47. But the Board imposed no such requirement. In-
stead, it pointed to the lack of advertising as an example,
among others, of Samsung’s failure to show that those out-
side of the JCT-VC knew about the JCT-VC website. Final
Written Decision, 2018 WL 1940480 at *6. Samsung also
argues that the Board required it to show that the WD4
reference was indexed. Again, the Board did no such thing.
Rather, it noted that the structure of the website, which
organized content by meeting and lacked a way to search
by subject matter, meant that a person would only find the
SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD. 17
WD4 reference if they knew where to look. The Board’s
ensuing analysis, as explained above, is consistent with our
precedent and factually supported. Samsung also faults
the Board for changing its view from its institution deci-
sions to its final written decisions. We have repeatedly
said, however, that “[t]he Board is free to change its view
of the merits after further development of the record, and
should do so if convinced its initial inclinations were
wrong.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068
(Fed. Cir. 2016); see also In re Magnum Oil Tools Int’l, Ltd.,
829 F.3d 1364, 1377 (Fed. Cir. 2016) (“[T]he Board has an
obligation to assess the [validity] question anew after trial
based on the totality of the record.”). The Board did just
that.
We reach the same conclusion with respect to the
MPEG website for the same reasons stated above. Appel-
lant’s Br. 56 (noting the similarities between the JCT-VC
website and the MPEG website). In particular, the Board’s
conclusion that a person of ordinary skill in the art would
not have been able to find the WD4 reference on the MPEG
website, even after exercising reasonable diligence, is sup-
ported by substantial evidence. Final Written Decision,
2018 WL 1940480 at *7–9.
3. JCT-VC Listserv
Samsung last argues that the WD4 reference was pub-
licly accessible because Mr. Bross emailed it to the JCT-VC
listserv. On this point, Mr. Bross testified that the listserv
included 254 JCT-VC members and other “interested indi-
viduals.” J.A. 7947–48. Mr. Bross further testified that
“any person could subscribe to the JCT-VC reflector by re-
questing a subscription at the JCT-VC reflector manage-
ment site” and “anyone with a valid e-mail address
requesting subscription was typically approved.”
J.A. 7948.
The Board credited this evidence, at least in part.
For example, the Board found that Mr. Bross emailed a
18 SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD.
link to the WD4 reference to the listserv in October 2011.
Final Written Decision, 2018 WL 1940480 at *9. It also
agreed that the listserv may have included “others who
may have opted into the [listserv].” Id. The Board, how-
ever, found this evidence insufficient to establish public ac-
cessibility because it could not determine that “those 254
individuals represented a significant portion of those inter-
ested and skilled in the art.” Id. Instead, the Board viewed
the email as a “limited distribution” that did not show the
work was “generally disseminated to persons interested
and ordinarily skilled in the art.” Id.
Samsung argues that the Board erred by confusing ac-
cess with accessibility. We agree. Our cases have consist-
ently held that the standard for public accessibility is
whether a person of ordinary skill in the art could, after
exercising reasonable diligence, access a reference. Jazz,
895 F.3d at 1355–56 (“A reference is considered publicly
accessible upon a satisfactory showing that such document
has been disseminated or otherwise made available to the
extent that persons interested and ordinarily skilled in the
subject matter or art, exercising reasonable diligence, can
locate it. If accessibility is proved, there is no requirement
to show that particular members of the public actually re-
ceived the information.” (internal quotation marks and ci-
tations omitted)); In re Lister, 583 F.3d 1307, 1314 (Fed.
Cir. 2009) (“[O]ur cases have held that once accessibility is
shown, it is unnecessary to show that anyone actually in-
spected the reference.”); Constant v. Advanced Micro-De-
vices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988) (“If
accessibility is proved, there is no requirement to show that
particular members of the public actually received the in-
formation.”). Thus, a petitioner need not establish that
specific persons actually accessed or received a work to
show that the work was publicly accessible.
The Board departed from this well-established princi-
ple by repeatedly faulting Samsung for not proving that the
WD4 reference was “generally” or “widely” disseminated.
SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD. 19
Final Written Decision, 2018 WL 1940480 at *9. In fact,
a limited distribution can make a work publicly accessible
under certain circumstances. See, e.g., GoPro, 908 F.3d at
694. But the Board’s analysis stopped short of considering
whether those circumstances were present here. The
Board also faulted Samsung for failing to show that the
email recipients “represented a significant portion of those
interested and skilled in the art.” Final Written Decision,
2018 WL 1940480 at *9. That was not Samsung’s burden.
See, e.g., Mass. Inst. of Tech. v. AB Fortia, 774 F.2d 1104
(Fed. Cir. 1985) (distribution to six conference attendees
made work publicly accessible). The Board’s decision to re-
ject Samsung’s evidence because it did not establish that
enough interested and ordinarily skilled artisans actually
obtained the WD4 reference was therefore erroneous.
Infobridge offers no substantive response on this point.
Infobridge actually agrees that the relevant question here
is “the extent that [the WD4 reference] could b[e] located
by an interested person exercising reasonable diligence.”
Appellee’s Br. 28 (emphasis added). Infobridge simply ar-
gues that the Board applied this test here. We are not per-
suaded. As noted above, the only rationales offered by the
Board on this issue were legally erroneous. 4 In re NuVa-
sive, 842 F.3d 1376, 1383 (Fed. Cir. 2016) (“The PTAB’s
own explanation must suffice for us to see that the agency
has done its job . . . .”).
4 The Board’s rationales and conclusions with re-
spect to the JCT-VC and MPEG websites do not suffer from
this same defect. See, e.g., Final Written Decision, 2018 WL
1940480 at *7 (“Although the JCT-VC site was organized
in a hierarchical manner, the evidence does not establish
[that the] WD4 [reference] was indexed in a manner that
one ordinarily skilled in the art, exercising reasonable dil-
igence, could locate it.” (emphasis added)).
20 SAMSUNG ELECS. CO., LTD. v. INFOBRIDGE PTE. LTD.
Rather than requiring Samsung to prove that persons
of ordinary skill actually received the listserv email, the
Board should have considered whether Samsung’s evi-
dence established that an ordinarily skilled artisan could
have accessed the WD4 reference, after exercising reason-
able diligence, based on the listserv email. This might in-
clude examining whether a person of ordinary skill,
exercising reasonable diligence, would have joined the
listserv. See, e.g., GoPro, 908 F.3d at 694. It also might
include considering the circumstances of the email itself,
for example why the email was sent and whether it was
covered by an expectation of confidentiality. See, e.g.,
Mass. Inst. of Tech., 774 F.2d at 1109. Because the record
is not clear on these factual questions, we decline to resolve
them in the first instance on appeal. See, e.g., Medtronic,
891 F.3d at 1381–83 (remanding for the Board to consider
the public accessibility question). In particular, we are re-
luctant to assume that an email among potential collabo-
rators should be treated the same as a public disclosure
without clear findings by the Board. Accordingly, we va-
cate the Board’s finding that Mr. Bross’s email did not
make the WD4 reference publicly accessible and remand so
that the Board can consider this issue after applying the
correct legal standard.
III. CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. Ultimately, the Board ap-
plied an erroneous legal standard in concluding that the
listserv email did not make the WD4 reference publicly ac-
cessible. We therefore vacate the Board’s findings on this
point and remand for further proceedings consistent with
this opinion.
VACATED AND REMANDED
COSTS
No costs.