Netflix, Inc. v. DivX, LLC, No. 22-1138 (Fed. Cir. 2023)Annotate this Case
The DivX patent explains, in a section titled “Background of the Invention,” that “[t]he present invention relates generally to encoding, transmission and decoding of multimedia files.” In its petition for inter partes review, Netflix asserted that several claims of the patent would have been obvious in view of prior art, Zetts as modified by Kaku. In a section titled “Field of the Invention,” Kaku’s specification states that the invention “relates to motion image apparatuses and, more particularly, to a motion image reproducing apparatus which is applicable to a digital camera for reproducing motion image data recorded on a recording medium.” The Patent Trial and Appeal Board found that Kaku failed to qualify as analogous art.
The Federal Circuit vacated and remanded. The Board failed to identify the field of endeavor for either the challenged patent or the prior art and thus failed to establish analogous art under the field of endeavor test. The Board’s directive that Netflix more precisely articulate the relevant field of endeavor to meet its burden was unduly strict.