Federal Circuit: Conference Distribution Still a Printed Publication even if No PHOSITA Attend

by Dennis Crouch

GoPro, Inc. v. Contour IP Holding LLC (Fed. Cir. 2018) [Original Opinion][Revised Opinion]

In its July 2018 decision, the Federal Circuit vacated a PTAB IPR final decision over a prior-art dispute — whether a GoPro catalog counts as prior art as a “printed publication” under 35 U.S.C. 35 U.S.C. § 102(b) (pre-AIA). Below I discuss the July Federal Circuit decision as well as the November 1 panel revision decision. 

In its IPR institution decision, the PTAB found that the patent challenger had made a threshold showing that the catalog was prior art as a printed publication. However, on final analysis, the PTAB found that its prior art status had not been proven.  The patent challenger GoPro appealed.

The Federal Circuit has broadly interpreted “printed publication” to include all sorts of documents — so long as they were either (1) distributed to relevant members of the public; or (2) accessible to the relevant public.

A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’ Blue Calypso quoting Kyocera Wireless.

Here, the catalog in question was taken to the Tucker Rocky dealer-only trade show in Fort Worth Texas in July 2009 (before the critical date).  Tucker Rocky is a wholesaler of “action sports vehicles like motorcycles, motorbikes, ATVs, snowmobiles, and watercraft.”  A GoPro employee testified that he took the catalog to the show where it was displayed and distributed to attendees. The employee also testified that the GoPro continued to make the catalog available to “actual and potential customers, dealers, and retailers through its website, direct mail, and other means of distribution.”  In its response, Contour provided evidence that the Tucker Rocky show was limited only to dealers — and not open to the public.  The PTAB found the GoPro employee’s testimony credible — but found it insufficient to prove public accessibility — since the show was not advertised or announced to the public.  According to the Board — the fact that dealers attended was insufficient because dealers do sales not camera engineering — i.e., dealers are not persons of skill in the art of camera making.  Thus, this dealer show is different from an academic meeting where the attendees are skilled in the art.

On appeal, the Federal Circuit disagreed with the PTAB’s conclusions — holding that the Board too narrowly “focused on only one of several factors that are relevant to determining public accessibility in the context of materials distributed at conferences or meetings. . . . [O]ur case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.”

After reviewing the matter Federal Circuit rejected the PTAB analysis and found that the catalog’s use at the show counted as prior art.

Its original opinion focused more on factual matters — disputing some findings of the PTAB.  The new revised opinion focuses more on legal errors made by the PTAB — making this perhaps a more supportable opinion.

For a conference distribution, the key added line makes clear that the distribution can still count as a publication — even if not directly distributed to any person of skill in the art.

When direct availability to an ordinarily skilled artisan is no longer viewed as dispositive, the undisputed record evidence compels a conclusion that the GoPro Catalog is a printed publication as a matter of law.

It is this line that serves as the source of the essay title.  In the original opinion, the court quibbled with the notion that dealers were not PHOSITA.  The revised opinion substantially drops that argument and explains that the factor simply is not determinative.

I have black-lined the primary changes in the text based upon the rehearing decision:

Although the trade show was only open to dealers, there is no evidence or indication that any of the material disseminated or the products at the show excluded POV action cameras, or information related to such cameras.   Contrary to the Board’s conclusion, the attendees attracted to the show were likely more sophisticated and involved in the extreme action vehicle space than an average consumer. Thus, it is more likely than not that persons ordinarily skilled and interested in POV action cameras were in attendance or at least knew about the trade show and expected to find action sports cameras at the show. While the Board found that GoPro did not provide any evidence as to what products the companies at the trade show make, GoPro was not the only manufacturer of POV action cameras. The vendor list provided with Mr. Jones’s declaration listed a number of vendors who likely sell, produce and/or have a professional interest in digital video cameras. J.A. 4319, 4323–24.  This is especially true in light of the evidence that Tucker Rocky is a trade organization directed to action sports vehicles and accessories related thereto.  J.A. 4319.

The Board concluded that the GoPro Catalog was not a printed publication because the Tucker Rocky Dealer Show was not open to the general public and GoPro failed to provide evidence that someone ordinarily skilled in the art actually attended the dealer show.  But, the standard for public accessibility is one of “reasonable diligence,” Blue Calypso, 815 F.3d at 1348, to locate the information by “interested members of the relevant public.”  Constant, 848 F.2d at 1569 (emphasis added). A dealer show focused on extreme sports vehicles is an obvious forum for POV action sports cameras. And although the general public at large may not have been aware of the trade show, dealers of POV cameras would encompass the relevant audience such that a person ordinarily skilled and interested in POV action cameras, exercising reasonable diligence, should have been aware of the show. Mr. Jones testified that the dealer show was attended by actual and potential dealers, retailers, and customers of POV video cameras.  Additionally, the GoPro Catalog was disseminated with no restrictions and was intended to reach the general public.  Based upon Mr. Jones’s testimony, the evidence provided by GoPro regarding the Tucker Rocky Dealer Show, and the evidence of the Tucker Rocky Distributing website, we conclude that GoPro met its burden to show that its catalog is a printed publication under

Although the court did not well on this issue, the court noted that the patentee did not depose or cross examine the GoPro employee (Jones) who testified.  In hindsight, that may have been a strategic mistake.  Although Jones would have likely stuck to his testimony, a deposition would have likely been able to poke various holes into the account.

The revised opinion has a few other minor changes:

  • The Board based this decision on its finding conclusion that a certain GoPro catalog is not a prior art printed publication. We disagree. . . . In its final written decisions, the Board found concluded that the GoPro Catalog did not qualify as a prior art printed publication under 35 U.S.C. § 102(b).
  • The Board’s findings of fact, such as public accessibility, are reviewed for substantial evidence.

The change from “finding” to “conclusion” is not explained but these terms appear to be short-hand for “finding of fact” and “conclusion of law.” The Federal Circuit sees the question of whether a reference is a “printed publication” is a question of law — and so “conclusion of law” is the appropriate term.

= = = = =

Diversion into the wormhole of whether Public Accessibility a Question of Fact: I’m not confident in the court’s statement here that “public accessibility” is a question of fact.  In Klopfenstein, for instance, the court first noted that there were no factual disputes between the parties — but that the court still needed to determine whether the reference was publicly accessible. In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004).  Calling “public accessibility” a question of fact and “printed publication” a question of law is also problematic because the court has called the two classifications essentially overlapping — “Thus, throughout our case law, public accessibility has been the criterion by which a prior art reference will be judged for the purposes of § 102(b).” Klopfenstein.

In its 2018 Jazz Pharm. decision, the Federal Circuit stated that “Public accessibility is a question of fact that we review for substantial evidence.” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018). The Jazz Pharm. court did not explain its reasoning for this statement but merely cited In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011).  The NTP case also provides a 1-liner that “Whether a reference is publicly accessible is a question of fact that we review for substantial evidence.”  NTP did not provide any reasoning for this statement but merely cited back to the aforementioned In re Klopfenstein, 380 F.3d 1345, 1350 (Fed.Cir.2004).  Klopfenstein decided the question of public accessibility (which was disputed by the parties) shortly after stating that “there are no factual disputes between the parties in this appeal.” This appears to be a situation where the roots were not properly dyed.

Going back to NTP, the court cited to a particular statement in Klopfenstein for its conclusion that public accessibility is a question of fact:

Whether a reference is publicly accessible is a question of fact that we review for substantial evidence. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed.Cir.2004) (holding that whether a reference is publicly accessible is based on the “facts and circumstances surrounding the reference’s disclosure to members of the public”).

NTP.  Unfortunately, the NTP court badly mis-paraphrased Klopfenstein.  The more complete quote from Klopfenstein on this issue is as follows:

Where no facts are in dispute, the question of whether a reference represents a “printed publication” is a question of law. . . The determination of whether a reference is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.

KlopfensteinNTP took this quote to mean that the issue of public accessibility is a question of fact. But, as you can see, the quote refers to the broader issue of whether a document is a “printed publication” and actually holds that it is a question of law.

In the 2012 Voter Verified decision, the Federal Circuit explained that “Public accessibility is a legal conclusion based on underlying factual determinations.” Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012).  For this principle, the Federal Circuit cited to Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed.Cir.2002).  However, as far as I can tell, the Cooper Cameron decision says nothing of the kind (and the pin-cited portion of the case is not even related to the printed publication issue).

This whole series of failed citations makes the Federal Circuit look pretty bad.

27 thoughts on “Federal Circuit: Conference Distribution Still a Printed Publication even if No PHOSITA Attend

  1. 8

    Re the criticism of Fed. Cir. prior case citations accuracy, my impression is that they may be at least partially due to the way some attorneys these days seem to get away with miss-representing or miss-quoting prior decisions in their briefs. Which can get cited in the pending decision. That was particularly apparent in the Fed. Cir. serial decisional mess it had made of “best mode” defense case law, until the AIA finally put an end to it.
    Of course this is the sort of thing judges ought be able to expect their law clerks to check even if they are too busy personally [with hundreds of IPR appeals these days, for example].

    1. 8.1

      Of course this is the sort of thing judges ought be able to expect their law clerks to check even if they are too busy personally [with hundreds of IPR appeals these days, for example].

      More than “ought,” it is their job to get the law right.

      That is their only job.

      at least partially due to the way some attorneys these days seem to get away with miss-representing or miss-quoting prior decisions in their briefs.

      That is a serious problem — and serious perhaps not so much as to extent, but that it happens at all. Take for example on these very threads where a (purported) attorney insists on dissembling as to optional claim formats somehow not being optional, whining of certain machines merely doing what those machines are meant to do (without using the proper patent doctrine of inherency; or recognizing the 35 USC 100 aspects of “new use” or the 35 USC 101 aspects of “or improvement thereof.”

      All the while accusing others of the very type of dissembling that THAT person rampantly engages in.

      Now imagine that, but that THAT behavior has been relentlessly going on for some 13 and 3/4 years.

  2. 7

    For what it’s worth, in an opinion issued in September of this year, Nobel Biocare v. Instradent, the Federal Circuit said the following:

    Whether a reference qualifies as a “printed publication” is a legal conclusion based on underlying factual findings. Jazz Pharm., 895 F.3d at 1356. The underlying factual findings include whether a reference was publicly accessible. In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011).

  3. 6

    This whole series of failed citations makes the Federal Circuit look pretty bad.

    Maybe they have been learning the wrong lessons from the anti-patent folk here at Patently-O.

    (At least their patent decisions are not filled with non-patent law rants)

  4. 5

    Different patent different systems have had different rationales for defining (a) when an invention has been divulged to the public, for purposes of defeating novelty, or (b) when a printed publication has been sufficiently disclosed to the public so as to defeat an allegation of infringement directed to the product divulged in the publication.

    I’ve had a number of these cases over the years, and the Fed Circuit seems to have thrown out a distinction heretofore important in the analysis.

    For example, I had a patent application directed to a unique golf putter design. The examiner located an ancient advertisement in a Golf Digest (in Crystal City days before the USPTO tossed out the examiner’s search shoes of non-patent prior art), which essentially disclosed the invention. No doubt, the magazine was widely available to the public, even though the advertisement would be between very hard and impossible to find by search (unless the USPTO examiner search files had been searched, which we could have done, had the client authorized such a search). OK, the reference was publicly accessible.

    In another example, in a closer call, back in early internet days, before search engines became available, an interest group including a lot of folks who would qualify as a PHOSITA, had access to a novelty defeating article. OK, the Board decided that even though the article could not have been easily identified by any then existing search means and spotted from the “outside world” – it still was prior art, since it was not confidential and was available to a significant group of PHOSITAs….

    Now, in this case, a manufacturer doesn’t hide their disclosure – but doesn’t put it in the hands of a group of PHOSITAs, and does absolutely nothing to place it in a location searchable by the public or by PHOSITAs. Yet, they can kill a patent where the inventing public didn’t have the ability to locate and access the invention disclosure publication. So, this is akin to the EPO’s examples of destruction of patent rights, finding absence of absolute novelty, (a) with a bicycle was driven around streets of London at night, where the invention wasn’t seen by the public or PHOSITAs, or (b) where a kaleidoscope is shown to friends at a private party (non of whom would be a PHOSITA) – without benefit of a non-disclosure agreement – before the filing date of the patent application.

    Clearly, the policy objective of placing information in the hands of the relevant public – the PHOSITA – in exchange for being able to kill a patent, has been abandoned. Rather, now, we’ve got a true “absolute novelty” standard. You could disclose something in a flyer to a variety of limited trade show audiences or other selected target audiences where no PHOSITAs were present, but presto, you still can kill anything which alleges infringement. IMHO, that’s wrong. At least European thinking…

    1. 5.1

      Blindman, your note also is a reminder that there is lots of old but good prior art that is not findable on the internet.
      But one could also note that the kind of printed marketing brochure that is the subject of this decision is nowadays far more likely to be published on the internet.

    2. 5.2

      Blindman, can you expand on your two examples, the bicycle at night and kaleidoscope at party? I do not see how they fit with the EPC’s novelty provision (Article 54), which deprives subject matter of novelty only when an enabling disclosure of subject matter within the ambit of the claim has been already “made available” to at least one member of “the public”.

      If I had invented a new bicycle gear component, and tested it by riding around fast, on deserted streeets, at night, giving nobody any opportunity to examine my new gear train, I would still have novelty under the EPC.

      If I showed my one and only kaleidoscope prototype to friends at a party, not explaining how it works and not allowing them any opportunity to find out for themselves, I would still have patentable novelty under the EPC.

      Can you give us EPO Board of Appeal Decision citations? Or would you say that is not necessary?

      You use the expression “absolute novelty” as if those words appear in the Statute. But they don’t, do they?

      Your unfinished last sentence is tantalizing. Its ending is not at all obvious to me. Will you provide that too?

    1. 4.1

      Are you thinking, perhaps, of Folding Attic Stairs Limited v The Loft Stairs Company Limited [2009] EWHC 1221 (Pat)?

      “What happens if a manufacturer allows selected members of the public onto his premises, not on terms of confidence, where they can see a product that is still under development, but they are not experts and do not understand its significance – could that invalidate a patent afterwards applied for?” (At [1])

      Short answer (under UK law): “no”.

      1. 4.1.1

        Bravo, Mark! I must refresh my memory of that case. Thanks.

    2. 4.2

      I note, also, that there is a somewhat analogous case in Australia: Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31.

      A (prior art, anticipating) roller blind product had been imported into Australia, and displayed in the importer’s showroom. An ‘enabling disclosure’ of the prior art mechanism would, however, have required a skilled person to disassemble and inspect the relevant components of the blind. There was no evidence (nearly 20 years after the fact) that anybody had done so, or that any of the roller blind products had ever been sold and thus come into the unsupervised hands of the wider public.

      The upshot (on appeal): no anticipation.

      For more, in case you are interested: link to blog.patentology.com.au

      1. 4.2.1

        Thanks. Analogous, yes, but presumably the definition of the state of the art in Oz is (was?) different from the absolute novelty standard of the EPC (ie within the UK).

        1. 4.2.1.1

          gasp, another Sovereign choice…?

      2. 4.2.2

        Indeed – same as the US, pre-AIA, i.e. absolute/global for publication, but limited to the jurisdiction for disclosures via use.

        As you correctly surmise, that’s “was”. The 2013 Raising the Bar reforms introduced absolute novelty for all forms of disclosure.

        It is not clear, however, whether the result would have been different in a case such as this. The onus would still lie with the challenger to prove, on the balance of probabilities, that there had been a relevant public disclosure of the prior art mechanism.

  5. 3

    Is footnote 5 a “finding” by the appellate panel wrt the sufficiency of the evidence. I didn’t think appellate courts made findings of fact.

  6. 2

    This is a good case analysis. Especially appropriate because some folks do not appreciate that the distinction between a “finding of fact” and a “conclusion” [of law] [no matter where and how that distinction is drawn by the Fed. Cir.] is a vital distinction under the APA as to how likely any PTAB decision can be validly overruled by the Fed. Cir.
    Also note that here we are talking about written documents for which neither the document preparation date or the document contents are in dispute as inadequate, only the document distribution issue. So it is not surprising that the Fed. Cir. has taken a liberal view of that subject.

  7. 1

    Setting the issue of questions of “law” versus “fact” aside for the moment, this is definitely the right result. The idea that the publication status of a particular piece of admittedly non-confidential information should turn on whether that information was formally and directly presented to a “PHOSITA” is absurd. A non-confidential publication is a non-confidential publication. Requiring defendants to prove in every instance that some admittedly published information was “actually” heard or read and (I presume) “understood” by an “actual” person having skill in the art has the potential to turn every patent case into a circus.

    1. 1.1

      I believe you are correct MM — with the caveat that I have not examined the full evidence presented here. Handing out catalogs at a trade show with 1,000+ dealers of similar goods should be sufficient to serve as prior art. Trade shows are known as a place to go and check out competitor products.

      The aspect of the case that I’m a bit uncomfortable with is the decision is based upon self-serving testimony from the patentee (via employee). Courts require corroboration on this issue as required by the clear-and-convincing evidence standard. I’m not sure what is required by the PTAB with the lower standard for cancelling patent claims. That said, in this case the court talks about some corroborating evidence (emails, etc.) and the other-side never challenged the credibility of the testimony.

      1. 1.1.1

        Dennis, while corroboration of inventor testimony is required for a 102(g) “prior invention” defense, even in those cases contemporaneous written documentation can be utilized for corroboration, and there is no dispute here that there was a contemporaneous documentation.
        Also, as to both your and MMs questions, for all future patents under the AIA, why does not the AIA 102 concluding phrase “or otherwise available to the public” answer or moot the “printed publication” distribution question here?

        1. 1.1.1.1

          why does not the AIA 102 concluding phrase “or otherwise available to the public” answer or moot the “printed publication” distribution question here?

          Good question.

        2. 1.1.1.2

          IPR’s may only be instituted and may only consider PRINTED PUBLICATIONS. See 35USC311(b). So even if this was post-AIA, the question is not moot.

          Something may be prior art due to the on-sale privisions, or due to the “otherwise available” provisions, and would nevertheless not be considered in an IPR. They would, however, be admissible in court, obviously.

          1. 1.1.1.2.1

            ? IPRs may also be instituted on and consider patents, and there is no statutory basis for treating the effective prior art date of a patent based on a provisional application in an IPR any differently than it normally has in litigation or in the PTO.

            1. 1.1.1.2.1.1

              Paul: The point is, the question of whether this is a “printed publication” or not is not “mooted” because of the “otherwise available to the public” provision of the AIA. It still matters if this (non-patent) catalog is a “printed publication” or not, because that determines whether it can be used for an IPR.

      2. 1.1.2

        DC The aspect of the case that I’m a bit uncomfortable with is the decision is based upon self-serving testimony from the patentee (via employee). Courts require corroboration on this issue as required by the clear-and-convincing evidence standard.

        I think you meant “patent challenger” here, not “patentee”.

        And I agree that uncorroborated testimony about the catalog being distributed would be a problem (if the testimony was challenged — I’m less sure about how things plays out in the adversarial context if the assertion is admitted to be true without additional evidence, or if it’s unchallenged). It seems like there was evidence of the publication being available on the web as well which may have been treated as “corroboration” …?

    2. 1.2

      by an “actual” person having skill in the art

      That’s a pretty shoddy take on the legal notion of PHOSITA.

      The calculus here (by the court) may well be as shoddy. One cannot divorce the (legal) object from the calculation and leave behind only “printed publication.”

    3. 1.3

      Of course MM. How can a legal fiction be a question of fact?

      The legal fiction is that there is even a 1/1000th chance a PHOSITA actually will see a given publication.

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