Defining a Printed Publication as Prior Art

In Medtronic Inc. v. Mark Barry, the PTAB confirmed the patentability of some of Barry’s patented back-straightening claims found in U.S. Patent Nos. 7,670,358 and 7,776,072.  The saving-grace for Barry was a PTAB ruling that a set of Videos and Slides distributed by Medtronic did not count as prior art “printed publications” because they were not sufficiently publicly accessible prior to Barry’s application filing. On appeal, however, the Federal Circuit has vacated the lower tribunal opinion — holding that the Board did not consider all the relevant factors in its determination.

Section 102 of the patent act establishes “printed publications” as a form of prior art.

Printed: Whether a publication is “printed” has been broadly applied to allow widely for fixed expressions – including recorded video and powerpoint slides. MPEP 2128 (R-08.2017).

Publication: At issue in this case is the “publication” requirement — which has been interpreted as a public circulation requirement.  That said, there is no requirement that the document be circulated to the public at large.  Rather, courts have held that circulation at a relevant scientific conference can be sufficient so long as there is no confidentiality requirement. Deep Welding, Inc. v. Sciaky Bros. Inc., 417 F.2d 1227, 1235, 163 USPQ 144 (7th Cir. 1969). In the leading case of In re Hall, the Federal Circuit ruled that ‘a single cataloged thesis in one university library’ was sufficient circulation – even without proof that anyone actually read the work. In re Hall, 781 F.2d 897 (Fed. Cir. 1986). In that instance, accessibility to the work was the key – “whether interested members of the relevant public could obtain the information if they wanted to.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988).

In this case, a CD containing the video was distributed at three spinal deformity research symposia and printed versions of the slides were distributed at two of the three events.

A number of court decisions have walked through this type of conference distribution applying what the court terms a “case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).  Still, in all of these inquiries, the primary question is whether the reference has been sufficiently made accessible to interested members of the public.

Consider:

  • MIT v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985): Paper that was orally presented at a conference was a printed publication even though only about 50 people were told of the paper and document itself was only distributed to six people.
  • Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009): Distributed research papers were not printed publications based upon “academic norms” that created an “expectation” of confidentiality. In Cordis, the court expressly ruled that a norm or expectation of confidentiality is sufficient to defeat public accessibility — even if there was no legal requirement of confidentiality.
  • In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004): Printed slide presentation displayed on a poster at a conference and without any stated expectation against copying counted as a printed publication.

In Klopfenstein, the court walked through a set of factors:

The factors relevant to the facts of this case are: the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.

Bringing these cases together, the Federal Circuit here explained in Medtronic that the PTAB should have considered a set of factors regarding the distribution of the video and slides:

As relevant to this case, the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed are important considerations. Another factor is whether there is an expectation of confidentiality [either formal or informal] between the distributor and the recipients of the materials.

On remand, the PTAB will refresh its analysis.

= = = = =

The court also provided the following footnote:

The Supreme Court recently held in SAS Institute Inc. v. Iancu, 584 U.S. __ (2018), that the statute does not permit a partial institution leading to a partial final written decision. Because the final written decisions relating to this appeal do not address every ground raised in the petitions, we understand from the Board’s recent guidance document, Guidance on the impact of SAS on AIA trial proceedings (April 26, 2018), that it will consider the previously non-considered grounds on remand.

The footnote here is not an order, and should be read along with the holding in PGS Geophysical v. Iancu (reopening partially instituted IPR not necessary).

= = = = =

In 2016, a Texas Jury awarded Barry $20 million for the infringement. That case is on appeal with Medtronic arguing prior use, on sale bar, prior invention (102(g)), inequitable conduct, and improper damage calculation.

12 thoughts on “Defining a Printed Publication as Prior Art

  1. 3

    “On remand, the PTAB will refresh its analysis.”

    Thanks for the laugh.

    1. 3.1

      Good for a laugh for sure.

  2. 2

    This is a remand back to the PTAB to re-consider its denial of unpatentability of this IPR claim. But the Court’s footnote that: “we understand from the Board’s recent guidance .. that it will consider” looks to me like a Fed. Cir. expectation/hint that the Board WILL also decide the other claims in the IPR petition that were not considered. [Unless both parties waive doing that, as in another recent case.] I would think that the Board will take that hit?
    ——————
    This case is another example of not appreciating how broadly the Fed. Cir. has defined 102 “printed publication” in patent litigation appeal decisions over the years. Those 102 decisions are now of course also applicable to reexaminations and IPRs. Other examples besides those mentioned in this case may include non-confidential service manuals, advertising materials, internet adds, draft research report circulations, etc..

    1. 2.1

      Good point regarding how underappreciated the Fed. Cir. has broadly defined 102 “printed publications”.

  3. 1

    In this case, a CD containing the video was distributed at three spinal deformity research symposia and printed versions of the slides were distributed at two of the three events.

    Unless there were confidentiality stamps on the video/slides, how can this not be prior art under current case law? This kind of behavior is the definition of “publicizing”, far more so than a catalogued thesis that was distributed to pretty much nobody.

    1. 1.1

      Completely agree.

      1. 1.1.1

        ^ Wait…what?! When has that ever happened?

        1. 1.1.1.1

          Meet the Published Prior Art Alliance! Our newsletter will follow shortly.

        2. 1.1.1.2

          Note the content of his post: less emotion, no ad hominem, and actually hewing close to the law.

          ANYTIME Malcolm behaves like that, he should be encouraged!

    2. 1.2

      How? Suppose the events were Invitation Only, and held under what UK Pols call “Chatham House ” rules ie it goes without saying, no leaks after the meeting.

      1. 1.2.1

        Max, it sounds like you are talking about an implied and accepted confidentiality agreement by all disclosees, which is not the case here.
        Also note that most of these cases result from patent owners who delayed filing their patent applications until after disclosures to others, and application delaying is not a favored patent law policy or practice.

      2. 1.2.2

        Suppose the events were Invitation Only, and held under what UK Pols call “Chatham House” rules…

        Then each of those facts would be relevant considerations to the overall analysis, neither of which would be dispositive in and of themselves.

Leave a Reply

Your email address will not be published. Required fields are marked *

 Notify me of followup comments via e-mail.

You can click here to Subscribe without commenting

Add a picture