“General Knowledge” is Alive and Well When Analyzing Obviousness

In Koninklijke Philips N.V. v. Google LLC et al.,¹ the Federal Circuit reaffirmed that the “general knowledge” of a person of ordinary skill in the art can be used to supply a missing claim limitation in an obviousness analysis during inter partes review under 35 USC § 311(b).

Google LLC (“Google”) filed a petition with the Patent Trial and Appeal Board (“PTAB”) for inter partes review of U.S. Patent No. 7,529,806, which is directed to a solution for addressing delays in media playback due to downloading.² Claim 1 is representative:

1. A method of, at a client device, forming a media presentation from multiple related files, including a control information file, stored on one or more server computers within a computer network, the method comprising acts of:
downloading the control information file to the client device;
the client device parsing the control information file; and
based on parsing of the control information file, the client device:
identifying multiple alternative [files] corresponding to a given segment of the media presentation,
determining which files of the multiple alternative files to retrieve based on system restraints;
retrieving the determined file of the multiple alternative files to begin a media presentation, wherein if the determined file is one of a plurality of files required for the media presentation, the method further comprises acts of:
concurrent with the media presentation, retrieving a next file; and
using content of the next file to continue the media presentation.³

The inter partes review focused on the last two steps of claim 1: “concurrent with the media presentation, retrieving a next file,” and “using content of the next file to continue the media presentation.” In short, these two steps address downloading delays by concurrently retrieving the next file to be played, while the current file is being played.⁴

In requesting that the PTAB invalidate claim 1, Google argued, among other things, that all the steps were disclosed by Synchronized Multimedia Integration Language (SMIL) 1.0 except the last two steps. Google argued that these steps would have been obvious over SMIL 1.0 in light of the “general knowledge” of the skilled artisan.⁵ To support the “general knowledge” argument, Google relied on a technical publication to Hua⁶ and an expert declaration.⁷ Hua discloses a conventional pipelining scheme in which media is divided into segments and subsequent segments are downloaded while a current segment is playing.⁸ The PTAB agreed with Google and found that claim 1 would have been obvious in view of SMIL and “general knowledge.”⁹

Koninklijke Philips N.V. (“Philips”) appealed to the Federal Circuit and requested, among other things, review of the PTAB’s finding that claim 1 was obvious in view of SMIL 1.0 and “general knowledge.”¹⁰ Philips argued that the PTAB had erred in relying on “general knowledge” to supply missing claim elements based on two arguments. First, Philips argued that inter partes review is limited to patents or printed publications, and, thus, “general knowledge” would be prohibited to supply missing claim limitations.¹¹ Second, Philips argued that the use of “general knowledge” runs counter to the Federal Circuits decision in Arendi S.A.R.L. v Apple Inc. 832 F.3d 1355 (Fed. Cir. 2016).¹²

The Federal Circuit rejected both of these arguments. Addressing the first argument, the Federal Circuit noted that, while inter partes review is limited, a proper obviousness inquiry involves both the prior art and whether the “differences” between the claimed invention and the prior art would have been obvious the skilled artisan.¹³ The Federal Circuit stated:

[r]egardless of the tribunal, the inquiry into whether any ‘differences’ between the invention and the prior art would have rendered the invention obvious to a skilled artisan necessarily depends on such artisan’s knowledge.¹⁴

Thus, the Federal Circuit found that it was proper to look to the “general knowledge” when determining what would have been obvious to one of ordinary skill in the art.

Addressing the second argument, the Federal Circuit found that the current case was distinguishable from Arendi. In Arendi, the Federal Circuit cautioned against using “common sense or common knowledge” to supply limitations missing from the prior art. In this case, the Federal Circuit distinguished Arendi and found the use of “general knowledge” was proper:

[i]n Arendi, the Board relied on nothing more than ‘conclusory statements and unspecific expert testimony’ in finding that it would have been ‘common sense . . . to supply a limitation that was admittedly missing from the prior art,’ … Conversely, here the Board relied on expert evidence[, i.e., an expert declaration entered by Google], which was corroborated by [a technical publication by] Hua, in concluding that pipelining was not only in the prior art, but also within the general knowledge of a skilled artisan.¹⁵

Thus, the Federal Circuit found that pipelining was part of the “general knowledge,” and Google had presented sufficient evidence to support this position.

From this opinion, it appears that the Federal Circuit draws a distinction between “general knowledge” as prior art and “general knowledge” as part of the obviousness legal analysis in inter partes review. When evidence has established that certain knowledge is within the “general knowledge” of a skilled artisan, the “general knowledge” can be utilized in determining whether “differences” between the claimed invention and prior art would have been obvious.

Of note in this case, the PTAB also initiated, under its discretion, a separate ground of review based on the combination of SMIL and Hua, where Hua was used as prior art. Noting that Google had not requested review based on a combination of SMIL and Hua, the Federal Circuit found that the PTAB had erred because the PTAB cannot institute new grounds not originally initiated.¹⁶