The Court of Appeals for the Federal Circuit has affirmed a decision by the Patent Trial and Appeals Board (PTAB) that 11 claims of a Philips patent were “obvious” in light of prior art and thus invalid.
The alleged invention relates to:
a method of forming a media presentation using a control information file that (a) offers the media presentation in multiple alternative formats to allow a client device’s media player to “automatically choose the format compatible with the client’s play-out capabilities,”…; and (b) provides the media presentation in multiple files so the media player can download the next file concurrently with playback of the previous file…
Google filed a petition for inter partes review, contending that the challenged claims were obvious in light of the general knowledge of the “skilled artisan” regarding distributed multimedia presentation systems.
Google argued that “‘[p]ipelining’ was a well-known design technique that minimized the amount of time a user would have to wait to receive multimedia content.”
As the court noted, whether a claimed invention is “obvious” (and thus invalid) is a legal questions based on underlying fact findings.
As the court stated,
Although the prior art that can be considered in inter partes reviews is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art. Indeed, under 35 U.S.C. § 103, the obviousness inquiry turns not only on the prior art, but whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.”
Finding that “working with threads is a skill common for software engineers,” and that “it would have been within a skilled artisan’s abilities to take advantage of multi-threaded environments to develop a simultaneous download and playback application,” the court affirmed the PTAB’s decision that the challenged claims were unpatentable as obvious.
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