Koninklijke Philips N v. v. Google LLC

Case: 19-1177 Document: 86 Page: 1 Filed: 01/30/2020

United States Court of Appeals

for the Federal Circuit

______________________

KONINKLIJKE PHILIPS N.V.,

Appellant

v.

GOOGLE LLC, MICROSOFT CORPORATION,

MICROSOFT MOBILE INC.,

Appellees

______________________

2019-1177

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2017-

00447.

______________________

Decided: January 30, 2020

______________________

JUSTIN J. OLIVER, Venable LLP, Washington, DC, ar-

gued for appellant.

DAVID M. KRINSKY, Williams & Connolly LLP, Wash-

ington, DC, argued for all appellees. Appellee Google LLC

also represented by KEVIN HARDY, AARON P. MAURER,

ANDREW V. TRASK.

CHRISTINA JORDAN MCCULLOUGH, Perkins Coie, LLP,

Seattle, WA, for appellees Microsoft Corporation, Microsoft

Case: 19-1177 Document: 86 Page: 2 Filed: 01/30/2020

2 KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC

Mobile Inc. Also represented by CHAD S. CAMPBELL, Phoe-

nix, AZ.

______________________

Before PROST, Chief Judge, NEWMAN and MOORE,

Circuit Judges.

PROST, Chief Judge.

Koninklijke Philips N.V. (“Philips”) appeals the deci-

sion of the Patent Trial and Appeal Board (“Board”) in an

inter partes review of U.S. Patent No. 7,529,806 (“the ’806

patent”), in which the Board found that claims 1–11 were

unpatentable as obvious. For the reasons below, we af-

firm. 1

BACKGROUND

I

The ’806 patent identifies two prior art technologies for

delivering digital content for playback on a client device:

downloading and streaming. The ’806 patent states that

the downloading approach suffers from delay because the

user cannot play back the digital content until after the en-

tire file finishes downloading. The patent also states that

streaming generally requires “two-way intelligence” and a

“high level of integration between client and server soft-

ware,” which “mostly excludes third parties from develop-

ing custom server software . . . and/or client applications.”

’806 patent col. 1 ll. 24, 36–41.

1 Appellee Google LLC argues that, even if we disa-

gree with the Board’s findings on obviousness, we can af-

firm the judgment as to claims 1–9 and 11 on the

alternative ground that the claims are anticipated. Be-

cause we affirm the Board’s obviousness findings, we do not

reach this issue.

Case: 19-1177 Document: 86 Page: 3 Filed: 01/30/2020

KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC 3

The ’806 patent offers a hybrid approach as a solution.

In particular, 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 alter-

native formats to allow a client device’s media player to

“automatically choose the format compatible with the cli-

ent’s play-out capabilities,” id. at col. 3 ll. 55–56; 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, see id. at claim 1. Compared

to the traditional downloading approach, the alleged inven-

tion purportedly reduces delay because the media player

can download the next portion of a media presentation con-

currently with playback of the previous portion. The al-

leged invention also purportedly avoids any need for “two-

way intelligence” or “integration” between the client and

server software by permitting the media player itself to

choose which of the multiple alternative formats is most

appropriate.

Claim 1 is representative and recites:

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:

[1] downloading the control information file to the

client device;

[2] the client device parsing the control information

file; and based on parsing of the control infor-

mation file, the client device:

[3] identifying multiple alternative f[il]es corre-

sponding to a given segment of the media presen-

tation,

[4] determining which files of the multiple alterna-

tive files to retrieve based on system restraints;

Case: 19-1177 Document: 86 Page: 4 Filed: 01/30/2020

4 KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC

[5] retrieving the determined file of the multiple al-

ternative 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:

[6] concurrent with the media presentation, re-

trieving a next file; and

[7] using content of the next file to continue the me-

dia presentation.

Id. at claim 1 (bracketed numbers added for ease of discus-

sion). 2 Method steps identified above as steps [6] and [7]

only occur “if the determined file is one of a plurality of files

required for the media presentation” (“the conditional

statement”).

II

There are two prior art references relevant to this ap-

peal: Synchronized Multimedia Integration Language 1.0

Specification (“SMIL 1.0”) and Kien A. Hua et al., 2PSM:

An Efficient Framework for Searching Video Information

in a Limited-Bandwidth Environment, 7 Multimedia Sys-

tems 396 (1999) (“Hua”).

SMIL 1.0 describes a computer language in which a de-

signer creates a SMIL file that specifies the relationship

among media files that collectively make up a media

presentation. For example, SMIL 1.0 teaches a “switch”

element that specifies a set of alternative files from which

only one should be chosen by a media player. J.A. 243–44.

The switch element can, for instance, specify two audio

2 Google contends that claim 1 is representative. Ap-

pellee’s Br. 4. Philips neither disputes the representative-

ness of claim 1 nor makes any arguments suggesting that

claim 1 is not representative.

Case: 19-1177 Document: 86 Page: 5 Filed: 01/30/2020

KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC 5

files of different quality and instruct a media player to se-

lect one of the files based on the client system’s bandwidth.

J.A. 246. SMIL 1.0 also teaches a “seq” element that in-

structs a media player to play a list of files in sequence, one

after another. J.A. 237–38; see also Appellant’s Br. 7–8.

SMIL 1.0 does not disclose a way to specify the timing for

playback of a particular media file relative to the timing of

downloading another media file.

Hua provides a “review [of] the conventional pipelining

scheme.” J.A. 316. Hua explains that pipelining refers to

dividing a media presentation into multiple segments (S0,

S1, etc.) and playing segment Sn while S(n+1) is downloading.

So long as the playback duration of Sn “eclipse[s]” the

download time for S(n+1), the media presentation can be con-

tinuously played back starting after the first segment S0

finishes downloading. Id.

III

Google LLC (“Google”) filed a petition for inter partes

review presenting two grounds of unpatentability. First,

Google alleged that claims 1–7 and 9–11 of the ’806 patent

are anticipated by SMIL 1.0. 3 Google Inc. v. Koninklijke

Philips N.V., No. IPR2017-00447, Paper 2, at 20 (P.T.A.B.

Dec. 9, 2016) (“Petition”). Google argued that because steps

[6] and [7] of claim 1 are only required if the conditional

statement is met, these steps are not limiting and thus can

be ignored in the anticipation analysis. Google did not ad-

dress how or whether SMIL 1.0 would disclose these steps

if they were considered limiting.

Second, Google contended that, even if SMIL 1.0 did

not anticipate any claims, and even if steps [6] and [7] are

limiting, claims 1–11 “would nevertheless have been obvi-

ous over SMIL 1.0 in light of the general knowledge of the

3 Google also alleged that claims 12–13 were antici-

pated, but those claims are not at issue on appeal.

Case: 19-1177 Document: 86 Page: 6 Filed: 01/30/2020

6 KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC

[skilled artisan] regarding distributed multimedia presen-

tation systems as of the priority date.” Id. at 40 (emphasis

added). 4 Citing Hua and an expert declaration as author-

ity, the petition contended that “‘[p]ipelining’ was a well-

known design technique that minimized the amount of

time a user would have to wait to receive multimedia con-

tent” and that a skilled artisan “would have been motivated

to use pipelining with SMIL” to “minimize the amount of

time a user would have to wait to view a media presenta-

tion.” Id. at 42–43.

In its preliminary response, Philips argued that it was

inappropriate for Google to rely on Hua as evidence of gen-

eral knowledge but rather was required to make Hua “part

of the combination” and “explain[] how [Hua] would have

been combined with SMIL 1.0.” Google Inc. v. Koninklijke

Philips N.V., No. IPR2017-00447, Paper 6, at 42 (P.T.A.B.

Mar. 13, 2017) (“Preliminary Response”); see also id. at 49–

52. Philips also argued that Google could not rely on “con-

clusory statements of ‘general knowledge’” to supply a

missing claim limitation. Id. at 51.

The Board instituted review on three grounds, includ-

ing both grounds raised by Google. In addition, although

the Board disagreed with Philips that there was “any error

in [Google] relying on Hua as evidence of the knowledge of

a person [of] ordinary skill in the art,” the Board stated

that “[n]onetheless, for clarity, we exercise our discretion

and institute an inter partes review on the additional

ground that claims 1–11 would have been obvious over

SMIL 1.0 and Hua based on the arguments and evidence

presented in the Petition.” Google Inc. v. Koninklijke

4 Google also alleged that claims 12–16 were un-

patentable as obvious, but those claims are not at issue on

appeal.

Case: 19-1177 Document: 86 Page: 7 Filed: 01/30/2020

KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC 7

Philips N.V., No. IPR2017-00447, Paper 7, at 18 (P.T.A.B.

June 8, 2017) (“Institution Decision”).

The Board construed the claim term “a given segment

of [a/the] media presentation” to mean “a media presenta-

tion with multiple segments.” Google Inc. v. Koninklijke

Philips N.V., No. IPR2017-00447, Paper 29, at 7–8 (Sept.

6, 2018) (“Final Written Decision”) (alteration in original).

As conceded by Google, under this claim construction, the

conditional statement of claim 1—i.e., “if the determined

file is one of a plurality of files required for the media

presentation”—is always satisfied, rendering the steps

that follow mandatory and limiting. See, e.g., Appellee’s

Br. 53–54. 5

In view of this claim construction, the Board concluded

that Google had not demonstrated that any of the claims

were anticipated. Final Written Decision, at 10. But the

Board concluded that Google had demonstrated that claims

1–11 would have been obvious in view of SMIL 1.0. In ad-

dition, “[f]or the same reasons,” and based on “the same ar-

guments and evidence,” the Board concluded that Google

had demonstrated that claims 1–11 would have been obvi-

ous over SMIL 1.0 in view of Hua. Id. at 38–39.

Philips appealed. We have jurisdiction under 28

U.S.C. § 1295(a)(4)(A).

5 Although Google disputes this construction, it does

so only in relation to its argument that we can affirm the

judgment as to claims 1–9 and 11 on the alternative ground

that the claims are anticipated. Because we do not reach

this alternative avenue for affirmance, we do not reach this

claim construction dispute. Moreover, as explained below,

even under the Board’s construction, substantial evidence

supports the Board’s findings that claims 1–11 are un-

patentable as obvious.

Case: 19-1177 Document: 86 Page: 8 Filed: 01/30/2020

8 KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC

DISCUSSION

Obviousness is a legal question based on underlying

fact findings. Purdue Pharma L.P. v. Epic Pharma, LLC,

811 F.3d 1345, 1351 (Fed. Cir. 2016). We review the

Board’s legal determinations de novo and its underlying

factual determinations for substantial evidence. Rambus

Inc. v. Rea, 731 F.3d 1248, 1251 (Fed. Cir. 2013).

As stated previously, the Board found that claims 1–11

would have been obvious over SMIL 1.0 in light of Hua, and

SMIL 1.0 alone. On appeal, Philips advances three argu-

ments challenging these obviousness findings. First,

Philips argues that the Board erred by instituting inter

partes review on the ground that the claims would have

been obvious over SMIL 1.0 in light of Hua because Google

did not advance that combination of prior art in its petition.

Second, Philips contends that the Board erred in finding

that the claims would have been obvious in view of SMIL

1.0 because the Board impermissibly relied on “general

knowledge” to supply a missing claim limitation. Third,

Philips argues that even if we reject one or both of Philips’s

first two arguments, the Board’s obviousness findings are

nevertheless unsupported by substantial evidence. We dis-

cuss each of these arguments in turn.

I

We begin with Philips’s first argument that the Board

erred by instituting inter partes review on a ground not ad-

vanced in Google’s petition. The Board instituted inter

partes review on three grounds of unpatentability: (1) an-

ticipation in view of SMIL 1.0; (2) obviousness over SMIL

1.0; and (3) obviousness over SMIL 1.0 in combination with

Hua. It is undisputed that Google’s petition advanced only

the first two grounds; the petition did not allege the third.

See, e.g., Appellee’s Br. 45 (“The Board instituted [the

ground identified by Google in its petition], as well as a sec-

ond obviousness ground based on ‘SMIL 1.0 and Hua.’”); see

also Petition, at 20 (identifying ground 1 as anticipation by

Case: 19-1177 Document: 86 Page: 9 Filed: 01/30/2020

KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC 9

SMIL 1.0); id. at 40 (identifying ground 2 as obviousness

over SMIL 1.0); Institution Decision, at 18.

We hold that the Board erred by instituting inter

partes review based on a combination of prior art refer-

ences not advanced in Google’s petition. Under 35 U.S.C.

§ 311(a), a party may seek inter partes review by filing “a

petition to institute an inter partes review.” The Supreme

Court has explained that this language does not “contem-

plate a petition that asks the Director to initiate whatever

kind of inter partes review he might choose.” SAS Inst. Inc.

v. Iancu, 138 S. Ct. 1348, 1355 (2018). Rather, “[f]rom the

outset, we see that Congress chose to structure a process in

which it’s the petitioner, not the Director, who gets to de-

fine the contours of the proceeding.” Id. More specifically,

“the statute envisions that a petitioner will seek an inter

partes review of a particular kind—one guided by a petition

describing ‘each claim challenged’ and ‘the grounds on

which the challenge to each claim is based.’” Id. (quoting

35 U.S.C. § 312(a)(3)); see also id. (“[R]ather than create

(another) agency-led, inquisitorial process for reconsider-

ing patents, Congress opted for a party-directed, adversar-

ial process.”).

In addition, 35 U.S.C. § 314(b) states that “[t]he Direc-

tor shall determine whether to institute an inter partes re-

view . . . pursuant to a petition.” Thus, as explained by the

Supreme Court, § 314(b) informs us that the Director

is given only the choice “whether” to institute an

inter partes review. That language indicates a bi-

nary choice—either institute review or don’t. And

by using the term “pursuant to,” Congress told the

Director what he must say yes or no to: an inter

partes review that proceeds “[i]n accordance with”

or “in conformance to” the petition.

SAS, 138 S. Ct. at 1355–56 (quoting Oxford English Dic-

tionary (3d ed. Mar. 2016), www.oed.com/view/En-

try/155073) (alteration in original); see also id. at 1356

Case: 19-1177 Document: 86 Page: 10 Filed: 01/30/2020

10 KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC

(“The rest of the statute confirms, too, that the petitioner’s

petition, not the Director’s discretion, is supposed to guide

the life of the litigation.”).

Turning back to this case, in its institution decision,

the Board stated, “we exercise our discretion and institute

an inter partes review on the additional ground that claims

1–11 would have been obvious over SMIL 1.0 and Hua

based on the arguments and evidence presented in the Pe-

tition.” 6 Institution Decision, at 18 (emphases added). Alt-

hough the Board is not limited by the exact language of the

petition, see, e.g., Sirona Dental Sys. GmbH v. Institut

Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018), the

Board does not “enjoy[] a license to depart from the petition

and institute a different inter partes review of his own de-

sign.” See SAS, 138 S. Ct. at 1356 (emphasis in original).

Accordingly, we conclude that the Board erred when it in-

stituted inter partes review based on a combination of prior

art references Google did not advance in its petition.

Google’s counterarguments are unpersuasive. First,

Google argues that the Board properly instituted inter

partes review on obviousness over SMIL 1.0 in view of Hua

because the Board did so only “for clarity,” and only on “the

[same] arguments and evidence” Google presented in its

petition as to why the claims would have been obvious over

SMIL 1.0. See Institution Decision, at 18. However, as we

explained, it is the petition, not the Board’s “discretion,”

that defines the metes and bounds of an inter partes re-

view. See SAS, 138 S. Ct. at 1355–56. And Google’s peti-

tion did not advance an argument that the challenged

claims would have been obvious over SMIL 1.0 in combina-

tion with Hua.

6 We note that the Director has delegated the insti-

tution decision to the Board. See 37 C.F.R. § 42.4.

Case: 19-1177 Document: 86 Page: 11 Filed: 01/30/2020

KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC 11

Second, citing to our decisions in Anacor Pharmaceuti-

cals, Inc. v. Iancu, 889 F.3d 1372, 1379 (Fed. Cir. 2018),

and Genzyme Therapeutic Products Ltd. Partnership v. Bi-

omarin Pharmaceutical Inc., 825 F.3d 1360, 1366 (Fed. Cir.

2016), Google argues that the Board “need not adhere un-

thinkingly to the evidence and arguments precisely as for-

mulated in the petition” so long as the Board “provide[s]

reasonable notice of the invalidity arguments at issue and

an opportunity for the Patent Owner to be heard in re-

sponse to those arguments.” Appellee’s Br. 49.

Google’s reliance on Anacor and Genzyme is misplaced.

Both Anacor and Genzyme relate to the circumstances un-

der which the Board can rely on evidence not raised in the

petitioner’s petition to support the grounds that were

raised in the petition. See Anacor, 889 F.3d at 1364–67;

Genzyme, 825 F.3d at 1366. These cases do not concern

whether the Board has discretion to institute an inter

partes review on a ground of unpatentability not raised in

the petitioner’s petition. Thus, we find Google’s reliance on

these cases unpersuasive.

In sum, we conclude that the Board erred by instituting

inter partes review of claims 1–11 of the ’806 patent based

on obviousness over SMIL 1.0 and Hua because Google did

not advance such a combination of references in its peti-

tion.

II

Next we address Philips’s contention that the Board

erred in relying on “general knowledge” to supply a missing

claim limitation. Philips advances two arguments in sup-

port of this assertion.

First, Philips argues that because 35 U.S.C. § 311(b)

expressly limits inter partes reviews to “prior art consist-

ing of patents or printed publications,” and because general

knowledge is neither of those, § 311(b) prohibits use of

Case: 19-1177 Document: 86 Page: 12 Filed: 01/30/2020

12 KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC

general knowledge to supply a missing claim limitation in

an inter partes review. We disagree.

Although the prior art that can be considered in inter

partes reviews is limited to patents and printed publica-

tions, 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 in-

vention and the prior art are such that the claimed inven-

tion as a whole would have been obvious . . . to a person

having ordinary skill in the art to which the claimed inven-

tion pertains.” 35 U.S.C. § 103. Regardless of the tribunal,

the inquiry into whether any “differences” between the in-

vention and the prior art would have rendered the inven-

tion obvious to a skilled artisan necessarily depends on

such artisan’s knowledge. Dow Jones & Co. v. Ablaise Ltd.,

606 F.3d 1338, 1349, 1353 (Fed. Cir. 2010) (affirming the

district court’s grant of summary judgment of invalidity on

“grounds of obviousness under [a single prior art reference]

in view of general knowledge in the field,” in part because

the obviousness “analysis requires an assessment of the ‘. . .

background knowledge possessed by a person having ordi-

nary skill in the art’” (emphasis added) (quoting KSR Int’l

Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007))); see also Ar-

endi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir.

2016) (in an inter partes review, acknowledging that com-

mon sense and common knowledge can, under certain cir-

cumstances, be used to supply a missing limitation);

Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir.

2013) (in an ex parte reexamination, in which the applica-

ble prior art is similarly limited to patents and printed pub-

lications, determining that “[a]s KSR established, the

knowledge of such an artisan is part of the store of public

knowledge that must be consulted when considering

whether a claimed invention would have been obvious”).

Case: 19-1177 Document: 86 Page: 13 Filed: 01/30/2020

KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC 13

Here, Google properly alleged that although SMIL 1.0

did not disclose each and every element of the claimed in-

vention, the differences between the claimed invention and

SMIL 1.0 are such that the claimed invention would have

been obvious to a person having ordinary skill in the art

when considering SMIL 1.0. In particular, Google properly

alleged that a skilled artisan would have known about

pipelining and been motivated to combine pipelining with

SMIL 1.0. See, e.g., Petition, at 40–43.

Second, Philips argues that even if the Board is permit-

ted to rely on general knowledge to supply a missing claim

limitation in an inter partes review, doing so in this case

violates Arendi. In Arendi, we cautioned that although

“common sense and common knowledge have their proper

place in the obviousness inquiry,” (a) invoking “common

sense . . . to supply a limitation that was admittedly miss-

ing from the prior art” should generally only be done when

“the [missing] limitation in question [is] unusually simple

and the technology particularly straightforward;” and

(b) references to common sense “cannot be used as a whole-

sale substitute for reasoned analysis and evidentiary sup-

port.” 832 F.3d at 1361–62. We concluded in Arendi that

the Board erred in relying on common sense because such

reliance was based merely upon “conclusory statements

and unspecific expert testimony.” Id. at 1366.

Philips argues that this case is analogous to Arendi.

We disagree. In Arendi, the Board relied on nothing more

than “conclusory statements and unspecific expert testi-

mony” in finding that it would have been “common

sense . . . to supply a limitation that was admittedly miss-

ing from the prior art,” id. at 1362, 1366 (emphasis added).

Conversely, here the Board relied on expert evidence,

which was corroborated by Hua, in concluding that pipelin-

ing was not only in the prior art, but also within the general

knowledge of a skilled artisan. Moreover, Philips offered

no evidence to rebut the conclusion that a skilled artisan

would have known about pipelining.

Case: 19-1177 Document: 86 Page: 14 Filed: 01/30/2020

14 KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC

In sum, we conclude that the Board did not violate

§ 311(b) or the inter partes review statute in determining

that the claims would have been obvious over SMIL 1.0 in

light of the general knowledge of a skilled artisan.

III

Finally, Philips argues that substantial evidence does

not support the Board’s determination that the claims

would have been obvious over SMIL 1.0 in light of a skilled

artisan’s general knowledge. We disagree.

We focus our attention on the Board’s analysis with re-

spect to representative claim 1. The Board thoroughly ex-

plained why SMIL 1.0 combined with pipelining disclose

all the limitations of claim 1. Final Written Decision, at

17–27. In addition, relying on an expert declaration and

Hua as evidence of a skilled artisan’s general knowledge,

the Board found that a skilled artisan “would have been

motivated to reduce the wait time to receive media content

over the Internet by using pipelining with SMIL 1.0.” Id.

at 22–23; see J.A. 315; J.A. 199–200 (¶ 202). The Board

also determined that there would have been a reasonable

expectation of success. Final Written Decision, at 23. We

therefore conclude that the Board’s findings are supported

by substantial evidence.

Philips’s counterarguments are unavailing. For exam-

ple, Philips argues that SMIL 1.0 and Hua’s teaching of

conventional pipelining cannot be combined because SMIL

1.0 is incompatible with Hua’s teaching of dynamic re-seg-

mentation of video content. See, e.g., Appellant’s Reply Br.

3. However, the relevant inquiry is not whether a skilled

artisan would have been motivated to combine SMIL 1.0

with the teachings of Hua, but rather whether a skilled ar-

tisan would have been motivated to combine SMIL 1.0 with

his general knowledge of pipelining. And, as noted above,

substantial evidence, including expert testimony, supports

the Board’s determination that a skilled artisan would

have been motivated to combine SMIL 1.0 with his

Case: 19-1177 Document: 86 Page: 15 Filed: 01/30/2020

KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC 15

knowledge of conventional pipelining (i.e., simultaneous

download and playback) to achieve the claimed invention.

See Final Written Decision, at 26; see also, e.g., J.A. 198–

203 (¶¶ 198–207).

Philips also argues that the Board impermissibly relies

on the notion that SMIL 1.0 and pipelining can exist “sim-

ultaneously” but fails to explain a reason for combining the

elements in the manner claimed. See, e.g., Appellant’s Br.

39. Philips ignores the Board’s extensive findings, which

are supported by substantial evidence, explaining how a

skilled artisan would have been motivated to combine

SMIL 1.0 with pipelining to achieve the claimed method.

See, e.g., Final Written Decision, at 22–27; see also, e.g., J.A.

198–203 (¶¶ 198–207).

Philips further argues that “[t]he Board’s combination

also fails because the basis for the combination rests on the

patentee’s own disclosure.” Appellant’s Br. 35–40, 50–51.

More specifically, Philips argues that the Board impermis-

sibly relied on the ’806 patent’s disclosure that a client de-

vice can playout one file while downloading another via a

multithreaded environment and that “working with

threads is a skill common for software engineers.” See ’806

patent col. 3 ll. 20–30; see also Appellant’s Br. 35–36.

Philips reasons that this statement only relates to enable-

ment—i.e., that pipelining could be implemented with well-

known multithreading techniques—and has no bearing on

the obviousness inquiry. Appellant’s Reply Br. 15–19.

The Board’s reliance on the ’806 patent’s disclosure was

proper. As an initial matter, it is appropriate to rely on

admissions in a patent’s specification when assessing

whether that patent’s claims would have been obvious.

See, e.g., PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,

491 F.3d 1342, 1362 (Fed. Cir. 2007) (“Admissions in the

specification regarding the prior art are binding on the pa-

tentee for purposes of a later inquiry into obviousness.”).

What matters is that substantial evidence supports the

Case: 19-1177 Document: 86 Page: 16 Filed: 01/30/2020

16 KONINKLIJKE PHILIPS N.V. v. GOOGLE LLC

findings and inferences made based on those admissions.

Here, the Board properly relied on this disclosure as evi-

dence that it would have been within a skilled artisan’s

abilities to take advantage of multithreaded environments

to develop a simultaneous download and playback applica-

tion. See J.A. 202–203. The Board supported its additional

findings—including that a skilled artisan would have been

motivated to combine SMIL 1.0 with pipelining to achieve

the claimed invention and would have had a reasonable ex-

pectation of success in doing so—with, for example, cita-

tions to an expert declaration as well as the Hua reference.

See, e.g., Final Written Decision, at 22–23; see also J.A. 315;

J.A. 199–200 (¶ 202).

Accordingly, we determine that the Board’s factual

findings underlying its obviousness determination are sup-

ported by substantial evidence.

CONCLUSION

We have considered Philips’s remaining arguments but

find them unpersuasive. For the foregoing reasons, we af-

firm the Board’s decision that claims 1–11 of the ’806 pa-

tent are unpatentable as obvious.

AFFIRMED