by Dennis Crouch
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
findingconclusion that a certain GoPro catalog is not a prior art printed publication. We disagree. . . . In its final written decisions, the Board foundconcluded 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.
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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.
Klopfenstein. NTP 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.
Another source of law here is In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986), which states that “[t]he § 102 publication bar is a legal determination based on underlying fact issues.” For this proposition, Hall cites back to In re Wyer, 655 F.2d 221, 227 (Cust. & Pat. App. 1981), which does not discuss any fact-law divide but only that “[e]ach case must be decided on the basis of its own facts.” Id. Hall also cites to another thesis-publication, Application of Bayer, 568 F.2d 1357, 1357 (Cust. & Pat. App. 1978). In Bayer, the CCPA analyses does the same type of public accessibility analysis seemingly reviewing a large number of facts – but adds a footnote indicating that “we are here concerned only with a question of law.” Id.
This whole series of failed citations makes the Federal Circuit look pretty bad.