By: Mel R. Quintos

Introduction This Newsletter is directed to the case of M&K Holdings, Inc. v. Samsung Electronics Co., Ltd. (decided on February 1, 2021), which is an appeal to the U.S. Court of Appeals for the Federal Circuit (“CAFC”) from a U.S. PTO Patent Trial and Appeal Board (“Board”) decision of an inter partes review proceeding of U.S. Patent 9,113,163 (“the ‘163 patent”) owned by M&K Holdings. Samsung Electronics challenged the claims of the ‘163 patent as unpatentable. The ‘163 patent is directed to an efficient method for compressing video files. The Board held all claims of the ‘163 patent unpatentable. M&K argues, among other things, that the Board erred by relying on references that do not qualify as prior art printed publications because some of the references relied upon by Samsung Electronics were not publicly accessible.

The issue in this case is whether the references cited by Samsung Electronics against the ‘163 patent were publicly accessible and therefore qualify as printed publications under 35 U.S.C. §102 or §103.

Facts In filing its petition for inter partes review, Samsung Electronics relied upon references referred to as “WD4-v3,” Park, and Zhou. These references: