Case: 22-1138 Document: 41 Page: 1 Filed: 09/11/2023
United States Court of Appeals
for the Federal Circuit
______________________
NETFLIX, INC.,
Appellant
v.
DIVX, LLC,
Appellee
______________________
2022-1138
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
00646.
______________________
Decided: September 11, 2023
______________________
THOMAS SAUNDERS, Wilmer Cutler Pickering Hale and
Dorr LLP, Washington, DC, argued for appellant. Also rep-
resented by DAVID P. YIN; MARK CHRISTOPHER FLEMING,
JAMIE N. HADDAD, Boston, MA.
NATHAN NOBU LOWENSTEIN, Lowenstein & Weather-
wax LLP, Santa Monica, CA, argued for appellee. Also rep-
resented by PARHAM HENDIFAR, KENNETH J. WEATHERWAX.
______________________
Before HUGHES, STOLL, and STARK, Circuit Judges.
Case: 22-1138 Document: 41 Page: 2 Filed: 09/11/2023
2 NETFLIX, INC. v. DIVX, LLC
STOLL, Circuit Judge.
Netflix, Inc. appeals the Patent Trial and Appeal
Board’s final written decision in an inter partes review of
U.S. Patent No. 8,472,792. Netflix challenges the Board’s
finding that an asserted prior art reference fails to qualify
as analogous art. We hold that the Board abused its dis-
cretion in determining that Netflix failed to identify the
field of endeavor for either the ’792 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 pre-
cisely articulate the relevant field of endeavor to meet its
burden was unduly strict. We therefore vacate the Board’s
field of endeavor finding and remand for the Board to re-
consider that factual question consistent with this opinion.
BACKGROUND
I
The ’792 patent explains, in a section titled “Back-
ground of the Invention,” that “[t]he present invention re-
lates generally to encoding, transmission and decoding of
multimedia files.” ’792 patent col. 1 ll. 20–21; see also id.
at col. 1 ll. 38–40. The abstract of the patent similarly be-
gins: “A multimedia file and methods of generating, dis-
tributing and using the multimedia file are described.”
Continuing, the abstract states: “One embodiment of a
multimedia file in accordance with the present invention
includes a series of encoded video frames, a first index that
includes information indicative of the location within the
file and characteristics of each encoded video frame and a
separate second index that includes information indicative
of the location within the file of a subset of the encoded
video frames.” The detailed description of the invention
describes a file structure compliant with Microsoft’s Re-
source Interchange File Format (RIFF), which is used for
storing multimedia information. Id. at col. 5 ll. 33–39. Rel-
evant here is a special version of the RIFF format—the Au-
dio Video Interleave (AVI) file—which contains additional
Case: 22-1138 Document: 41 Page: 3 Filed: 09/11/2023
NETFLIX, INC. v. DIVX, LLC 3
storage structures called chunks. Id. at col. 5 l. 51–col. 6
l. 17. As characterized by the ’792 patent, a standard AVI
file contains an “idx1” chunk that contains information
about every single frame. See id. at col. 15 ll. 15–18, col. 22
ll. 20–22. The invention implements a multimedia file
based on the AVI file structure and requires an additional
chunk—the “index” chunk—that contains information for
a subset of frames. See id. at col. 15 ll. 15–18.
DivX, the patent owner, emphasizes that the ’792 pa-
tent describes and claims a feature called trick play func-
tionality, which is the ability to “fast forward, rewind and
scene skip[]” frames. Id. at col. 16 ll. 26–29; see Appellee’s
Br. 5. The specification describes a process for implement-
ing this functionality by locating a specific frame within a
multimedia file using an “index” chunk. See ’792 patent
Fig. 4.0.1, col. 4 ll. 29–32. After identifying the frame to be
sought, the invention searches through the “index” chunk
to find “tag” chunks that reference the frames closest to the
desired frame (i.e., the desired frame is located between the
frames referenced by the “tag” chunks) and returns the po-
sition of the video frame and any audio referenced by the
“tag” chunk within the multimedia file. Id. at col. 48 ll. 40–
46, col. 49 ll. 7–23. As claimed, the “index” chunk is “lo-
cated prior to the series of encoded video frames and the
first index,” id. at col. 51 ll. 40–45, which allows for trick
play functionality “prior to the downloading of the ‘idx1’
chunk,” id. at col. 16 ll. 26–29.
Claim 1 is illustrative of the claimed invention:
1. A decoder for decoding a multimedia file com-
prising at least one video track and at least one au-
dio track, the decoder comprising:
a processor; and
memory having a multimedia file including:
a series of encoded video frames;
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4 NETFLIX, INC. v. DIVX, LLC
a first index that includes information in-
dicative of the location within the file and
characteristics of each encoded video
frame; and
a separate second index that includes infor-
mation indicative of the location within the
file of a subset of the encoded video frames,
the separate second index located prior to
the series of encoded video frames and the
first index, the first and second indexes en-
abling trick play functionality.
Id. at col. 51 ll. 31–45.
II
In its petition for inter partes review, Netflix asserted
that claims 1, 5, 8, 9, 13–15, 18, and 21–23 of the ’792 pa-
tent would have been obvious in view of Zetts 1 as modified
by Kaku. 2 The issue on appeal is whether the secondary
reference, Kaku, is analogous art to the ’792 patent. In a
section titled “Field of the Invention,” Kaku’s specification
states that the invention “relates to motion image apparat-
uses and, more particularly, to a motion image reproducing
apparatus which is applicable to a digital camera for repro-
ducing motion image data recorded on a recording me-
dium.” Kaku col. 1 ll. 6–10. Kaku’s abstract discloses that,
in a reproduce mode, “image data accommodated in a de-
sired AVI file of a memory card is read out frame by frame
in an intermittent fashion.” Kaku’s summary of the inven-
tion refers to handling and manipulating data files contain-
ing frames of image data and sound. Id. at col. 1 ll. 35–39,
col. 2 ll. 28–31. In the detailed description of the preferred
embodiments, Kaku discloses using an index chunk in the
AVI file header to show image data and/or play sound data.
1 U.S. Patent No. 7,212,726.
2 U.S. Patent No. 6,671,408.
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NETFLIX, INC. v. DIVX, LLC 5
Id. at col. 5 ll. 22–30; see also id. Fig. 2. It also discloses
compressing and decompressing image data to display im-
ages to reproduce motion images. Id. at col. 2 ll. 19–24.
Although Kaku describes the “primary object” of its inven-
tion as focusing on reproducing a motion image as it relates
to memory size of the apparatus (i.e., a problem prevalent
with digital cameras), id. at col. 1 ll. 30–34, Kaku also clar-
ifies that “the invention is applicable to every electronic ap-
pliance to reproduce motion images.” Id. at col. 11 ll. 58–
61.
In its petition, Netflix argued that Zetts disclosed a sys-
tem and method of inserting an abridged index (“GOP off-
set table”) at the beginning of a multimedia file to facilitate
trick play, J.A. 6058–61, and that Kaku disclosed “using
the AVI file format to store video/audio data, with an ‘index
chunk,’ written to the end of the AVI file having the begin-
ning addresses of each frame,” J.A. 6026. Netflix con-
tended that a person of ordinary skill in the art would have
been motivated to apply Zetts’s teachings of inserting a
GOP offset table at the beginning of a multimedia file to
facilitate trick play functionality in an AVI file as taught
by Kaku because “the GOP offset table is compact” and al-
lows users to jump to desired locations without being forced
to view the entire video. J.A. 6032. DivX argued in its pre-
liminary response that Kaku was cumulative art already
considered by the examiner. J.A. 6122–24. The Board in-
stituted the inter partes review.
In its patent owner response, DivX raised the argu-
ment that Kaku is non-analogous art. J.A. 6291–315.
DivX relied on testimony from its expert, Dr. Chandrajit
Bajaj, that:
[A person of skill in the art] would understand that
the field of endeavor of the ’792 Patent relates to
facilitating trick play functionality in multimedia
content that is streamed or downloaded over the in-
ternet. There is, however, no indication that Kaku
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6 NETFLIX, INC. v. DIVX, LLC
has anything to do with enabling trick play func-
tionality, streamed content, or dual indexes. Nota-
bly, as discussed above, Kaku utilizes M-JPEG files
in limited memory cameras and does not even gen-
erally relate to streaming or the types of sophisti-
cated multimedia files addressed by the ’792
Patent. Thus, Kaku and the ’792 patent have dis-
tinct fields of endeavor.
J.A. 4042 ¶ 45. DivX also argued that Kaku is not reason-
ably pertinent to the problem the inventor of the ’792 pa-
tent sought to address. See J.A. 6302–05 (relying on its
expert’s testimony that the problem addressed by the ’792
patent was “facilitating trick play functionality in stream-
ing services”).
Netflix responded in its reply brief that Kaku was, in
fact, analogous art:
It is undisputed that Kaku teaches the AVI file for-
mat . . . Under Federal Circuit precedent, Kaku
must be considered for its AVI teachings, which
cannot be ignored even if Kaku were primarily di-
rected to camera embodiments. Moreover, Kaku is
not so limited. Kaku teaches that, “although the
embodiments were explained using a digital cam-
era, it is needless to say that the invention is appli-
cable to every electronic appliance to reproduce
motion images.” Kaku includes embodiments di-
rected to particular implementations of the AVI file
format, e.g., the “data file.” . . .
Here, the ’792 patent refers to AVI as prior art.
Therefore, Kaku is in the same field of endeavor.
“The Supreme Court’s decision in KSR . . . directs
us to construe the scope of analogous art broadly.”
Here, the ’792 patent broadly defines its scope as
including “encoding . . . and decoding of multime-
dia files.” Kaku teaches encoding (e.g.,
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NETFLIX, INC. v. DIVX, LLC 7
“compressed” image data) and decoding (e.g., “de-
compression”) of image data in AVI files. Under
Federal Circuit precedent, Kaku is reasonably per-
tinent.
J.A. 6403–05 (citations omitted).
DivX argued in its sur-reply that Netflix failed to meet
its burden to demonstrate that Kaku was analogous art to
the ’792 patent because Netflix did not explicitly identify
the field of endeavor or the reasonably pertinent problems
for either the ’792 patent or Kaku. J.A. 6471–76.
The Board agreed with DivX. It rejected Netflix’s obvi-
ousness argument because it found Netflix had not met its
burden of showing that Kaku is analogous art to the
’792 patent under either the field-of-endeavor test or the
reasonable-pertinence test. J.A. 33–34.
With respect to the field of endeavor, the Board held
that because Netflix “failed to identify the field of endeavor
of either the ’792 patent or Kaku, [Netflix] cannot demon-
strate that Kaku and the claimed invention are in the same
field, and therefore fail[ed] to meet its burden of establish-
ing analogous art under the field of endeavor test.” J.A. 21;
see also J.A. 20 (finding that Netflix’s reply “failed to mean-
ingfully respond to [DivX]’s arguments by identifying the
field of endeavor of the ’792 patent and explaining why
Kaku belonged in that field”). In addition, the Board found
the use of AVI files alone too narrow to define the field of
endeavor for either the ’792 patent or Kaku. J.A. 21. The
Board noted that Netflix appeared to present multiple dif-
ferent positions on what it viewed as the field of endeavor
throughout the case—i.e., “file formats, AVI” or “encoding
and decoding multimedia files.” J.A. 23–24. In the Board’s
view, this supported its determination that Netflix failed
to clearly identify a field of endeavor and, thus, failed to
meet its burden. J.A. 23–24.
Case: 22-1138 Document: 41 Page: 8 Filed: 09/11/2023
8 NETFLIX, INC. v. DIVX, LLC
With respect to whether Kaku was reasonably perti-
nent to the problem addressed by the ’792 patent, the
Board found that Netflix failed to identify the problem ad-
dressed by the ’792 patent or Kaku. J.A. 26. Netflix had
argued that Kaku was reasonably pertinent because the
’792 patent’s scope broadly includes encoding and decoding
multimedia files. But the Board faulted Netflix for merely
pointing to encoding and decoding—something “well-
known in the art”—instead of addressing “the problem that
the ’792 patent seeks to solve.” J.A. 26–27; see also J.A. 26
(explaining that “the problems to which both [the inven-
tion-in-dispute and the prior art] relate must be identified
and compared” (quoting Donner Tech., LLC v. Pro Stage
Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020))). The
Board instead agreed with DivX and its expert “that the
problem that the ’792 patent seeks to solve is facilitating
trick play functionality in streaming media.” J.A. 27. Be-
cause, in the Board’s view, Kaku was not reasonably perti-
nent to that problem, the Board concluded that Kaku was
not analogous art under the reasonably pertinent prong.
Netflix appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a).
DISCUSSION
We use “[t]wo separate tests [to] define the scope of
analogous art: ‘(1) whether the art is from the same field
of endeavor, regardless of the problem addressed and, (2) if
the reference is not within the field of the inventor’s en-
deavor, whether the reference still is reasonably pertinent
to the particular problem with which the inventor is in-
volved.’” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374,
1379 (Fed. Cir. 2019) (quoting In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004)). The Board found that Kaku does
not qualify as analogous art under either test. For the rea-
sons that follow, we hold that the Board abused its discre-
tion in requiring Netflix to explicitly identify the field of
endeavor using specific language, but that the Board’s
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NETFLIX, INC. v. DIVX, LLC 9
reasonable-pertinence determination is supported by sub-
stantial evidence.
I
We begin by addressing the Board’s dispositive conclu-
sion that Netflix failed to identify the field of endeavor for
Kaku and the patent-in-suit. We review the Board’s proce-
dural or administrative decisions for an abuse of discretion.
See 5 U.S.C. § 706(2)(A), (E); Game & Tech. Co. v. Wargam-
ing Grp. Ltd., 942 F.3d 1343, 1348–49 (Fed. Cir. 2019). An
abuse of discretion occurs if a decision “(1) is clearly unrea-
sonable, arbitrary, or fanciful; (2) is based on an erroneous
conclusion of law; (3) rests on clearly erroneous fact find-
ing; or (4) involves a record that contains no evidence on
which the Board could rationally base its decision.” Intel-
ligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
1359, 1367 (Fed. Cir. 2016) (quoting Bilstad v. Wakalopu-
los, 386 F.3d 1116, 1121 (Fed. Cir. 2004)).
Whether a prior art reference qualifies as analogous
prior art is a question of fact that we review for substantial
evidence. Bigio, 381 F.3d at 1324. We do not charge a per-
son of ordinary skill in the art to know all arts; rather, we
presume he knows the teachings of “all the prior art in the
field of his endeavor” at the time the invention was made.
Airbus S.A.S., 941 F.3d at 1380 (quoting In re Wood,
599 F.2d 1032, 1036 (CCPA 1979)). Thus, for an obvious-
ness determination, a reference may only qualify as prior
art that a person of ordinary skill in the art would look to
if it is “analogous to the claimed invention.” Bigio,
381 F.3d at 1325; see also Manual of Patent Examining
Procedure (MPEP) § 2141.01(a).
We analyze whether prior art is analogous with “the
foresight of a person of ordinary skill, not with the hind-
sight of the inventor’s successful achievement.” See Sci.
Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359
(Fed. Cir. 2014); see also KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (“A factfinder should be aware, of
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10 NETFLIX, INC. v. DIVX, LLC
course, of the distortion caused by hindsight bias . . . .”).
This inquiry “is meant to defend against hindsight.” See In
re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006); In re Oetiker,
977 F.2d 1443, 1447 (Fed. Cir. 1992) (“The combination of
elements from non-analogous sources, in a manner that re-
constructs the applicant’s invention only with the benefit
of hindsight, is insufficient to present a prima facie case of
obviousness.”).
We determine the field of endeavor “by reference to ex-
planations of the invention’s subject matter in the patent
application, including the embodiments, function, and
structure of the claimed invention.” Bigio, 381 F.3d
at 1325; see In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986) (affirming that the references were within the field
of endeavor of the invention where the references shared
the same “function and structure”); MPEP § 2141.01(a)
(considering “similarities and differences in structure and
function” when assessing analogous art). The field of en-
deavor is “not limited to the specific point of novelty, the
narrowest possible conception of the field, or the particular
focus within a given field.” Unwired Planet, LLC v. Google
Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016); see also Jeffrey T.
Burgess, The Analogous Art Test, 7 BUFF. INTELL. PROP.
L.J. 63, 72 (2009) (explaining that field of endeavor may be
broadly defined because it relies on “the complete disclo-
sure of all embodiments in the patent’s specification”);
Lance Leonard Barry, Cézanne and Renoir: Analogous Art
in Patent Law, 13 TEX. INTELL. PROP. L.J. 243, 244 (2005)
(stating analogous art test merely gauges whether prior art
is “too remote” to be treated as analogous art); id. at 247
(“[C]ourts generally take an expansive view of what consti-
tutes analogous art.”). Importantly, “the scope of any field
of endeavor will vary with the factual description of each
invention.” Bigio, 381 F.3d at 1326. Unlike the reasona-
ble-pertinence test, the field-of-endeavor test does not look
to the problem that the patent purports to address. In re
Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). It is enough
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NETFLIX, INC. v. DIVX, LLC 11
that the prior art reference falls within the relevant field of
endeavor of the patent-in-suit.
We have affirmed findings of analogous art where the
references shared a general field of endeavor. See, e.g., Un-
wired Planet, 841 F.3d at 1001–02 (affirming Board’s find-
ing of analogous art where the patent-in-dispute and prior
art were both “in the field of interface design, with [the
prior art] focusing on graphical user interfaces and the [pa-
tent-in-dispute] focusing on interfaces for location-based
services,” because “[t]hese two areas of focus overlap within
the broader field of interface design because the teachings
in graphical user interface design . . . have relevance in in-
terfaces for location-based applications”); In re Mettke,
570 F.3d 1356, 1359 (Fed. Cir. 2009) (affirming Board’s
identification of the field of endeavor as “pay-for-use pub-
lication communication terminations” where the specifica-
tion described various communication media, not just
“providing access to the Internet” as directed by the claim-
in-dispute).
Here, Netflix argues that the Board erroneously re-
quired it to specifically state both Kaku’s and the ’792 pa-
tent’s field of endeavor, using the exact words “field of
endeavor,” to meet its burden in response to DivX’s argu-
ment concerning analogous art. Appellant’s Br. 37–38; see
Oral Arg. at 0:47–0:57, https://oralarguments.cafc.
uscourts.gov/default.aspx?fl=22-1138_03072023.mp3. We
agree.
The Board abused its discretion in determining that
Netflix failed to articulate a field of endeavor. Netflix iden-
tified two alternative theories for what it viewed as Kaku’s
and the patent-in-suit’s overlapping fields of endeavor—
(1) AVI files; or (2) encoding and decoding multimedia files.
Although Netflix’s reply brief before the Board did not for-
mulaically articulate a field of endeavor using those exact
words, our precedent does not require the use of magic
words. The Board erred by imposing a higher burden than
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12 NETFLIX, INC. v. DIVX, LLC
that required by our precedent. The Board acknowledged
that Netflix argued “that ‘Kaku must be considered for its
AVI teachings,’ and that ‘Kaku includes embodiments di-
rected to particular implementations of the AVI file for-
mat.’” J.A. 20 (quoting J.A. 6404 (Netflix reply)). We fail
to see how this was not enough for the Board to understand
Netflix’s position that Kaku’s field of endeavor is AVI files.
Addressing the ’792 patent, Netflix argued that the inven-
tion “refers to AVI as prior art” and cited sections of the
’792 patent that discussed the AVI file and how the
“chunks” of the invention’s multimedia file “are defined as
part of the AVI file format.” J.A. 6404–05 (citing ’792 pa-
tent col. 5 ll. 33–38, col. 5 l. 51–col. 6 l. 17, col. 22 ll. 20–
22). Taken together and in context, Netflix sufficiently ar-
gued that the field of endeavor for both the ’792 patent and
Kaku is AVI file formats.
Furthermore, Netflix alternatively argued in its reply
brief before the Board that the ’792 patent’s broad scope
includes “encoding . . . and decoding of multimedia files,”
J.A. 6405 (citing ’792 patent col. 1 ll. 20–21); see also Oral
Arg. at 8:50–9:09, and that Kaku teaches “encoding . . . and
decoding” for image data in AVI files through compression
and decompression, J.A. 6405 (citing Kaku col. 2 ll. 19–24).
Although the Board characterizes this argument as exclu-
sive to the issue of reasonable pertinence, J.A. 23, we disa-
gree with the Board’s unduly rigid view of the analogous
art framework. As we have recognized, the evidence and
analysis relating to the field of endeavor and reasonably
pertinent prongs may overlap. See Unwired Planet,
841 F.3d at 1001–02 (finding that the patent-at-issue and
the asserted prior art were in the same field of endeavor
and “reasonably pertinent to the problem of displaying ad-
dress information,” based on the same disclosures concern-
ing graphical user interface design based on geography and
the supporting expert testimony). Contrary to the Board’s
unduly rigid requirement that a petitioner explicitly iden-
tify a field of endeavor, there are instances—like in
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NETFLIX, INC. v. DIVX, LLC 13
Netflix’s reply in this case—where general language is suf-
ficient to allow the Board to consider alternative argu-
ments on the merits. In other words, even where a
petitioner does not explicitly define a field of endeavor, its
briefing may nonetheless present an argument on that is-
sue when taken as a whole.
Our conclusion that the Board erred is bolstered by the
Board’s own analysis. After holding that Netflix failed to
identify a field of endeavor and thus failed to meet its bur-
den, the Board purported to analyze the field-of-endeavor
question without clearly articulating what it viewed as the
field of endeavor. The Board acknowledged that DivX “re-
lies on Dr. Bajaj’s testimony on the field of endeavor of the
’792 patent and of Kaku” and found “Dr. Bajaj’s testimony
supported by the cited disclosures.” J.A. 25. As noted
above, Dr. Bajaj testified that “the field of endeavor of the
’792 Patent relates to facilitating trick play functionality in
multimedia content that is streamed or downloaded over
the internet.” J.A. 4042 ¶ 45. In the very next sentence,
however, the Board suggested a different, broader field of
endeavor, noting that “[t]he ’792 patent’s Background of
the Invention makes clear that the patent relates to encod-
ing, transmission, and decoding of multimedia files.”
J.A. 25. Contrary to the strict requirement it imposed on
Netflix, the Board at no point in its analysis used specific
language to articulate or explicitly identify the field of en-
deavor—e.g., “the field of endeavor is trick play functional-
ity.” Moreover, like Netflix, the Board identified two
possibilities for the ’792 patent’s field of endeavor. See
J.A. 25 (“The ’792 patent claims are each directed to using
multiple indexes and enabling trick play functionality in
multimedia files.”). Given the Board’s own articulation of
two potential fields of endeavor without the use of magic
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14 NETFLIX, INC. v. DIVX, LLC
words, 3 we have difficulty understanding how it could view
Netflix’s reply brief as insufficient for failure to affirma-
tively identify a single field of endeavor. See J.A. 24.
We thus remand to allow the Board to decide this fac-
tual question of whether Kaku is directed to the same field
of endeavor as the patent-in-suit based on the arguments
fairly presented by the parties, including Netflix’s argu-
ments that Kaku and the ’792 patent are both directed to
AVI files and/or that they are both directed to the encoding
and decoding of multimedia files.
In so holding, we note the unusual circumstances of
this case. We understand it is not our role to reweigh evi-
dence; nor is it the Board’s role to make arguments on be-
half of the parties. But in this unique case, where the
Board found Netflix’s reply brief so deficient as to not pre-
sent any argument regarding the field of endeavor, we are
reluctant to affirm the Board’s factual finding, which rests
on a failure to identify a field of endeavor rather than a
clear analysis of why Kaku is not, in fact, directed to the
same field of endeavor. In these circumstances, we find
that the Board abused its discretion and remand for the
3 We also note that one of the potential fields of en-
deavor identified by the Board—“encoding, transmission,
and decoding of multimedia files”—mimics the argument
presented by Netflix when it stated that “the ’792 patent
broadly defines its scope as including ‘encoding . . . and de-
coding of multimedia files.’” J.A. 6405; ’792 patent col. 1
ll. 20–21. On remand, the Board should consider whether
both the ’792 patent and Kaku relate to this possible field
of endeavor.
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NETFLIX, INC. v. DIVX, LLC 15
Board to fully consider the question of whether the ’792 pa-
tent and Kaku share the same field of endeavor. 4
II
We next consider whether the Board’s application of
the reasonably pertinent test is supported by substantial
evidence. See Bigio, 381 F.3d at 1325. “[W]e only presume
knowledge from those arts reasonably pertinent to the par-
ticular problem with which the inventor was involved.”
Airbus S.A.S., 941 F.3d at 1381 (quoting Wood, 599 F.2d
at 1036). Prior art that is outside an inventor’s field of en-
deavor is reasonably pertinent “only if its subject matter
logically would have commended itself to an inventor’s at-
tention in considering his problem.” Id. at 1382 (quota-
tions omitted). Put another way, a prior art reference is
reasonably pertinent only if “a person of ordinary skill
would reasonably have consulted those references and ap-
plied their teachings in seeking a solution to the problem
that the inventor was attempting to solve.” In re GPAC
Inc., 57 F.3d 1573, 1578 (Fed. Cir. 1995). “In order to de-
termine whether a reference is ‘reasonably pertinent,’ . . .
a reasonable factfinder should consider record evidence
cited by the parties to demonstrate the knowledge and per-
spective of a person of ordinary skill in the art at the time
of the invention.” Airbus S.A.S., 941 F.3d at 1383.
Netflix challenges the Board’s determination that
Kaku is not reasonably pertinent to the problem addressed
by the ’792 patent.
4 Netflix also argues the merits of the Board’s field-
of-endeavor analysis. Appellant’s Br. 38–48. Because the
Board’s analysis of the merits is intertwined with its deter-
mination that Netflix waived this argument by failing to
identify a field of endeavor, we remand for the Board to
consider this issue anew.
Case: 22-1138 Document: 41 Page: 16 Filed: 09/11/2023
16 NETFLIX, INC. v. DIVX, LLC
We hold that substantial evidence supports the Board’s
finding. For the ’792 patent, the Board considered the spec-
ification, claims, and prosecution history in determining
that the ’792 patent related to the problem of facilitating
trick play in streaming multimedia. To support its finding,
the Board looked to the specification’s discussion of “dis-
playing a multimedia presentation contained within a mul-
timedia file non-sequentially,” J.A. 27 (quoting ’792 patent
col. 48 ll. 22–25); “skipping in an irregular fashion between
different portions,” id. (quoting ’792 patent col. 48 ll. 25–
27); and using “file formats for multimedia information
[such as RIFF and AVI] to enable standardized generation,
distribution and display of multimedia information,”
J.A. 27–28 (quoting ’792 patent col. 1 ll. 25–28, col. 5 ll. 33–
56). The Board noted that every claim recited “the first and
second indexes enabling trick play functionality.” J.A. 28
(quoting ’792 patent col. 51 l. 31–col. 54 l. 21). The Board
also credited testimony from DivX’s expert Dr. Bajaj, who
opined that the ’792 patent dealt with facilitating trick play
in streamed or downloaded multimedia. J.A. 28–29;
J.A. 4045 ¶¶ 49–50.
Regarding Kaku, the Board found that it addressed a
different problem than the ’792 patent: the problem of im-
age compression “to accommodate as lengthy a recording
as possible in a camera’s internal memory.” J.A. 29. To
reach this conclusion, the Board relied primarily on Kaku’s
specification. Specifically, the Board cited extensively to
the Background of the Invention and Summary of the In-
vention sections of Kaku, which refer to the problem of lim-
ited “memory capacity” in digital cameras and the desire to
“reproduc[e] motion images for a long time period regard-
less of a memory capacity.” J.A. 29–30 (citing Kaku col. 1
ll. 8–12, col. 1 ll. 14–33, col. 1 l. 65–col. 2 l. 4, col. 2 ll. 18–
27). The Board noted that the problems addressed by the
’792 patent—“trick play,” indexing to implement trick play,
and streaming multimedia—do not appear in Kaku.
J.A. 30. The Board again credited Dr. Bajaj’s testimony—
Case: 22-1138 Document: 41 Page: 17 Filed: 09/11/2023
NETFLIX, INC. v. DIVX, LLC 17
that the ’792 patent and Kaku are directed to different
problems—finding his testimony “consistent with the
teaching[s] of the ’792 patent and Kaku.” See J.A. 32 (cit-
ing J.A. 4044–48 ¶¶ 47–54). The Board concluded that a
skilled artisan considering the ’792 patent’s problem of
trick play would not have looked to Kaku, which addresses
a different problem. See J.A. 30, 32. In light of the evi-
dence supporting the Board’s finding, as well as the Board’s
thorough consideration of the record, we cannot say that
the Board’s finding is unreasonable. See Airbus S.A.S.,
941 F.3d at 1383. Accordingly, our remand does not in-
clude reconsideration of the reasonably pertinent test for
determining analogous art.
CONCLUSION
For the foregoing reasons, we vacate the Board’s obvi-
ousness determination as to claims 1, 5, 8, 9, 13–15, 18, and
21–23, and remand for further proceedings consistent with
this opinion. We affirm the Board’s decision in all other
respects.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.