Prior Art Must Be Publicly Accessible, Not Actually Accessed

| Samuel CockrielAdam Powell


Before Newman, Schall, and O’Malley. Appeal from the Patent Trial and Appeal Board.

Summary: A reference must be publicly accessible, not actually accessed, before the critical date to qualify as prior art.

Samsung requested Inter Partes Review of a patent owned by Infobridge. Samsung argued the claims were anticipated by a draft video coding standard. Samsung argued the draft was prior art because the author had emailed it to others working on the standard and a listserv of any “interested individual” who requested to be on the distribution list. The PTAB held the draft was not prior art because the email was a “limited distribution” that did not show the reference was “generally disseminated to persons interested and ordinarily skilled in the art.” Thus, the PTAB upheld all challenged claims.

The Federal Circuit held the PTAB erred by confusing access with accessibility. The Board should have considered whether Samsung’s evidence established that an ordinarily skilled artisan could have accessed the draft (e.g., by joining the listserv) instead of requiring Samsung to prove that ordinarily skilled artisans actually received the email. Accordingly, the Federal Circuit vacated and remanded for further factual findings.

Editor: Paul Stewart