Guest Post by Prof. Yelderman: Which Kinds of Printed Publications Invalidate Patents in Court?

Stephen Yelderman is a Professor of Law at the University of Notre Dame Law School.

Continuing our study of prior art in the district court, in this post we’ll take a closer look at printed publications. As I discussed in my original post, around 13% of anticipation invalidations and 34% of obviousness invalidations rely on art in this category. (The numbers may be a touch higher than that, as a result of invalidations for which we could not determine the prior art supporting the court’s conclusion). For more background on this project, you can find the full paper here.

The potential sweep of this prior art category is breathtaking. By the terms of the statute—both before and after the America Invents Act—a printed publication found anywhere in the world can qualify as prior art. Moreover, under Federal Circuit precedent, this category includes a number of things that would seem to stretch the colloquial meaning of “publication.” For example, a single copy of a doctoral thesis stored in a university library, a drawing available only by travelling to another country’s patent office, and a posterboard displayed for several days at a conference have all been held to constitute “printed publications.” In dicta, the Federal Circuit has even suggested that a transient display of slides, or a billboard (!?) could, on certain facts, count as a printed publication.

When I teach patent law, our discussion of the printed publications category tends to dwell on these extreme possibilities. But how often do these non-traditional publications actually invalidate patents in practice?

To get a handle on this question, we further classified printed publication prior art into several sub-categories:

This chart illustrates the percentage of invalidations relying on printed publications in each sub-category, as a share of invalidations relying on printed publications at all. Encouragingly, the majority of invalidations based on printed publications relied on traditional reference publications. Just over half of anticipating publications were categorized as regularly published books and journals. Among obviousness invalidations citing a printed publication, 68% cited at least one regularly published book or journal. (The percentages of obviousness invalidations sum to more than 100% because of invalidations citing publications in multiple sub-categories.)  Though some of these regularly published books and journals may have come from obscure outlets, they are at least the kind of documents that a library might collect and an interested researcher might access.

The next sub-category—catalogs, manuals, and brochures—consists of documents distributed to teach the public about the features or availability of a product. This category is conceptually interesting for two reasons. First, though catalogs and manuals are typically mass-produced and widely disseminated, they are not usually collected in research libraries. By their nature, many publications in this category are intended to be transient. These characteristics suggest that publications in this sub-category would likely be much more difficult for a hypothetical prior art searcher to find than a regularly published book or journal.

The second reason that the catalog, manuals, and brochures category is conceptually interesting is that these documents are often evidence of a different kind of prior art entirely—that is, prior uses and sales. In fact, in a few cases we found it unclear whether a product manual was coming in as a distinct prior art reference, or as evidence about the features present in a prior sale. The fact that district courts sometimes rely on publications in this category suggests that activity prior art may be even more important than our top-level analysis suggested.

That said, catalog, manuals, and brochures were fairly insignificant in the larger scheme of things. About a quarter of anticipating printed publications fell into this sub-category. But since only 13% of anticipation events cited a printed publication, that means only about 3% of anticipation events overall relied on a catalog, manual, or brochure. Likewise, though 15% of obviousness events citing a printed publication relied on a catalog, manual, or brochure, that comes out to only about 5% of obviousness events overall. So whether one conceives of these cases as invalidity by prior sale or invalidity by printed publication, the high-level picture of prior art does not change very much.

The next sub-category—“other”—includes all identifiable printed publications not falling into the other two sub-categories. For example, we found patents that had been invalidated by poster board displays, industry whitepapers, proposals circulated at working group meetings of technical standards bodies, doctoral dissertations, and postings on Internet discussion forums. (We did not, for the record, find any cases of patents invalidated by billboards.) The good news was that reliance on potentially obscure or idiosyncratic documents like these appeared to be rare. About 19% of anticipating printed publications fell into this sub-category, amounting to just about 2% of anticipation events overall. A little more than a quarter of obviousness invalidations citing a printed publication included one in the “other” category. These constituted about 9% of obviousness invalidations overall.

There were, however, some publications that defied further classification—usually because sealed court records prevented us from finding more than a shorthand reference to the relevant document. For anticipation, this was rare enough that it could not change our results very much. But this happened frequently enough in cases of obviousness that we must acknowledge some potential uncertainty. If all of the unidentifiable publications turned out to be non-traditional publications, it’s possible that up to 16% of obviousness invalidations may have relied on a publication in the “other” category.

Finally, it’s important to remember that this data only tells us how district courts invalidate patents—not how many or why patents might be invalid in general. It is possible that cases involving non-traditional publications are more likely to settle than other cases, or, for that matter, that they’re less likely to settle. There is a significant possibility of selection effects here, which prevents us from making any inferences about patent quality overall. So, in the end, I’ll have to keep teaching those cases about slide presentations and unpublished college theses, even if “publications” like those only rarely invalidate patents in court.

37 thoughts on “Guest Post by Prof. Yelderman: Which Kinds of Printed Publications Invalidate Patents in Court?

  1. 3

    Give the Professor already has gathered the data….I would be interested in seeing how his analysis changed if the potential value of the patent (via damages) were included in the analysis (where available).

    I would surmise that many of these OUTLIER references…while being a small proportion of invalidating ALL patents…..tend to crop up ONLY in cases where the potential damages are extremely high (compared to all patents). If true, this demonstrates a bias of the courts/CAFC making new exceptions (like the graduate thesis, etc.) based on monetary factors rather than being fair or balanced.

    1. 3.1

      I think once a defendant is dragged into Federal court the cost of doing a scorched earth search to find killer prior art is pretty minimal compared to the alternatives. The “value of the patent” is not going to factor in except to the extent that it’s reflected in the patentee’s settlement offer.

      1. 3.1.1

        Agree MM, and thus partially disagree with “valuationguy.” [Also, the word “valuation” makes more sense in traditional licensing of technologies for new products, whereas these days so much of patent litigation is suing existing products with acquired old patents.] Clearly if a patent owner is demanding high damages, is unwilling to settle for less than a million or a reasonable running royalty, and is running up defendant discovery costs, and the defendant has not found good enough prior art in publications or patents for an IPR, then yes a really thorough prior art search via discovery, depositions, and third party search experts is well warranted. And note that for a “publication” to be prior art for an obscure publication like a graduate thesis will normally also require proof of cataloging, indexing, or other ways that a POSITA search could find it.
        Furthermore, almost all defendant attorneys are going to look through their own prior sales and service manuals and other publications as soon as they are sued.
        On top of that there are a few companies which will as a matter of “principle”? spend any amount of shareholder funds to fight a patent suit even if it could have been licensed for far less.
        And, as noted, there are some companies that do not adequately cost-control the discovery activities of their litigation counsels.

        1. 3.1.1.1

          I think you both are missing the gist of my comment.

          The outlier “judicial exceptions” to the general rules on prior art tends to only crop up when the patent dispute results in a huge damages.

          I’m not arguing that the defendant isn’t going to scrap the bottom of the barrel to try and find some obscure “prior art”….just that the Courts have seemed to disproportionately GRANT the obscure references as “prior art” when large damages in play…when in a case with lower damages (but similar scorched earth tactics by the defendant), the Court would DENY an obscure reference as prior art.

          If the data supports this…it demonstrates a statistical BIAS by the Courts. Every case and piece of prior art is obviously different so it wouldn’t PROVE anything (i.e. causation)…but its a good data point to understand.

          1. 3.1.1.1.1

            “valuationguy,” the case law of whether or not a “printed publication” is 102 or 103 prior art or not is about as clear as one such issue can get, established over many years, and not in flux [unlike Alice “abstractions”]. So any D.C. variations from this established case law on THIS subject would easily get reversed on appeal. So it does NOT “demonstrate a statistical BIAS by the Courts” or “judicial exceptions” to APPLY it differently in suits with high asserted infringement damages.
            [Obviously such suits go to trial more often, so they are not statistically representative of the 95% or so of patent suits settled before trial. Plus, the analysis is ignoring the many suits now ended before trial by IPR decisions based on publications.]

            1. 3.1.1.1.1.1

              BTW, the best way to avoid wasting a lot of money losing an expensive lawsuit on a [overvalued in retrospective] patent is for the patent owner to do their own thorough prior art search before suing.* Surprisingly often they do not, even though it is a very minor cost as compared to what they will spend on a full blown trial.
              *[and maybe also file a reexamination with some better claims?]

              1. 3.1.1.1.1.1.1

                I will chime in here and share that a “Best Practices” is to have the client pay for the best prior art search prior to writing the non-provisional application in the first instance.

                There is no requirement at all for any search, and the client should be informed that search results (if obtained) will be shared with the patent office.

                Of course, a couple of small caveats here: this is entirely the decision of the client; the client may decide not to spend money on a search and the subsequent analysis and up front drafting impacts; a client may not want applications FOR enforcement purposes (which should also engender a dialogue with the client as to the overall costs and strategies involved in voluntarily choosing to “play the patent game”); and other caveats may apply for particular client conditions.

                1. Indeed, and I have seen used by at least one company an ingenious reward system. For every proposed patent application submission to that firm that was demonstrated by a prior art search to be of little or no patentable scope, that firm was rewarded with two more to handle.

          2. 3.1.1.1.2

            You said “gist” which is the worst thing ever so I stopped reading.

  2. 2

    Reliance on poster presentations, meeting abstracts and dissertations is surely more common in the “unpredictable” arts where experimentation and research plays a larger role in the innovation process.

    1. 2.1

      MM, if you are referring to the natural human tendency of research scientists or engineers to want to make non-confidential presentations of research they are proud of before waiting for filing of patent applications, I don’t think that is unique to the “unpredictable arts.” It is, of course, particularly destructive of most foreign patent rights, since even under the AIA there is still a one year “exception” kind of grace period for filing U.S. applications.

      1. 2.1.1

        if you are referring to the natural human tendency of research scientists or engineers to want to make non-confidential presentations of research they are proud of before waiting for filing of patent applications

        No, I wasn’t thinking of that but I’m sure that is also more common (but not unique) in more research-oriented fields. Basic research, conducted by grad students and funded by the government, continues to be a driver of “innovation”. It’s always going to be the case that the potential downstream commercial value and/or applications aren’t always immediately appreciated. In other cases, the researcher isn’t going to be focused on patents or commercialization at all but simply on “the science.” These latter kinds of people are often just as skilled/motivated at getting results as the kinds of people who are focused on making a million bucks.

        1. 2.1.1.1

          In the biotech/chem fields, no grad student independently obtains government grants to do “basic research.” All PhD students have a mentors assisting them in designing experiments and drafting publications. Typically, it is an aspect of the mentor-professor’s research that the grad student is furthering. With a tenured, research professor comes the tech transfer office of the university, who are charged with filing IP and licensing said IP to Big Pharma. Contrary to popular thought, Universities do indeed have a focus on commercializing the science.

          1. 2.1.1.1.1

            I would agree and further postulate that the even seemingly “basic” of basic research is typically tied to a money-making aspiration.

            Long gone (by and large) is any sense of research for the sake of research.

            Bills have to be paid, and universities are no exception.

          2. 2.1.1.1.2

            In the biotech/chem fields, no grad student independently obtains government grants to do “basic research.”

            Not true. I’m not certain what “independent” is supposed to mean in this context (obviously graduate students are … graduate students) or how it is in any way responsive to what I wrote … but, until very recently, the Hughes Medical Institute provided “fellowships” to grad students who were deemed to be exceptional for one reason or another. I’m certain there are other organizations out there that continue to do so.

            In any event, what a strange response to a perfectly accurate comment! Yes, “xtian”, universities do have tech transfer offices. Yes, those universities do use those offices to make money so they can pay their bills.

            But in spite of the efforts of glibertarian know-nothing m0 uth breathers like “anon” to privatize everything under the sun, university faculty and graduate students still carry out basic research in all kinds of areas, including areas with no obvious commercial applications. Oh, how that must trouble some folks out there! That money could be used on so many other things, like putting brown children in cages and building a wall so big that it makes our Perznit’s deformed phallus semi-hard for five seconds.

            1. 2.1.1.1.2.1

              How is that vacuum chamber of yours Malcolm?

              It must be nice to be so unconnected to the real world and the infiltration of the profit motive into most everything.

              Is that why you have such cognitive dissonance when it comes to patent right protection (and the fact that money most always drives the creation of patent rights)?

              You need to get into a different line of work.

              1. 2.1.1.1.2.1.1

                It must be nice to be so unconnected to the real world and the infiltration of the profit motive into most everything.

                You know what’s nice? What’s nice is to be connected to the real world and to have a job as a patent attorney where I meet all kinds of interesting people who want to give me their money in exchange for a service. That money is given in turn (by me) to people without any “profit motive”. You know: poor people who have been rejected by our capitalist system, and poor people who reject our capitalist system.

                That’s what’s nice. Merry Christmas! Enjoy the “cognitive dissonance.”

                1. Talk about your dust-kicking….

                  You have managed to completely ignore what your clients are “willing to give you money for services” FOR, and instead, strain your shoulder with your self-aggrandizing “I give my money to the poor” mouthing. For all of your blathering, there is no connection to that real world that you presupposed in your “answer” above.

                  The facts remain: you despise the profit motive that runs part and parcel of the patent system – the very thing that “your services” render is driven by the thing that you most despise.

                  Your cognitive dissonance is not something to be enjoyed — by anyone.

                  It is something that you should be aware of because you are consumed by it.

                  There are plenty of other professions out there for which people would give you money for your services and you can still give your own profits to the poor.

                  Find one of those other areas.

                  Get into one of those other areas.

                  Not only would your clients be better off, YOU would be better off.

                  That is my Christmas wish for you.

            2. 2.1.1.1.2.2

              A simple search For HHMI IP policy is enlightening.

              “As a medical research organization, the Howard Hughes Medical Institute (“HHMI”) conducts scientific research in the public interest. HHMI has adopted this intellectual property policy to help ensure that inventions, discoveries, and other fruits of HHMI’s research are made available for the benefit of the public, and that the associated financial costs and rewards are fairly allocated.”

              link to hhmi.org

              I proffer that if “university faculty and graduate students still carry out basic research in all kinds of areas, including areas with no obvious commercial applications” for long enough, their grant/funding monies will dry up. In fact, HHMI’s policy incentivizes commercialization: “a inventors will share in the net royalties derived by HHMI from the invention.”

              And as my 13 year old would say, your last sentence is “trash.” Let’s try to stay on topic. This is an IP Blog.

              1. 2.1.1.1.2.2.1

                Let’s try to stay on topic. This is an IP Blog.

                Approaching 14 years (this coming February), Malcolm has consistently been UNable to do as you suggest.

                That’s older than your child.

                1. You still don’t get

                  Just leave, Billy.

                  Leave and never return and you’ll never have to listen to me accurately refer to you and your glibertarian cohorts as the steaming pile of hypocritical sniveling d0gtird lickers that you are.

                  Maybe you can start a big protest about it somewhere else. Because you’re a very serious person, after all. So civilized!

                2. There is nothing accurate at all in your rants related to me.

                  You would rather “one bucket” and not apply an iota of critical thinking on anything that does not fit your pre-ordained and trite script.

                  That’s a point you seem unable to grasp.

                  Just leave? Why don’t you stop your incessant whining and heed your own advice?

              2. 2.1.1.1.2.2.2

                your last sentence is “trash.”

                In fact, it’s probably the most important sentence in any comment on this page.

                Jeebus, I hope your 13 year old isn’t a Drumpf-fell@ting piece of glibertarian cr@p already.

                1. You still don’t get that this is just not an appropriate forum for your non-patent law rants, do you Malcolm?

          3. 2.1.1.1.3

            “xtain,” I agree with everything you have said above, but add a caveat. In some cases a prestige professor with a talent for bringing in lots of research funding has more university management political influence on patenting and inventor designation issues than the tech transfer office of the university and its attorneys. With occasional adverse consequences. In spite of the importance of patent royalties to the university itself.

            1. 2.1.1.1.3.1

              Certainly true. Also true is that — the last time I checked anyway — there is still this thing called “tenure” and professors who have it can do pretty much study whatever they want as long as they meet their teaching requirements. Yes, they still have to come up with grant money to pay people to work for them (unless they are independently wealthy) but — the last time I checked — the U.S. government doesn’t require commercial applicability before they hand out grants for scientific research.

              None of this is to say that the system we have is perfect. Not even close. In a sane world, our government would be investing huge amounts of money in educating its citizens, training scientists and engaging in basic research, rather than funneling that money into ps ych0 tic military exercises. Unfortunately the US has a history of being manipulated by an uneducated cult of people who fantasize about the “end times” when jeebus will “return” and people will be punished based on what they did with their wee-wees and how many times they said “cr @p” on the Internet.

              1. 2.1.1.1.3.1.1

                Your rant is noted, as is your strawman as to any type of “requirement” for the US Government in their handing out grants for scientific research.

                But wake up son and come back to the real world. The real world in which — by and large — most all “basic” research is tied to profit motives. No amount of you clenching your eyes tight is going to change that dynamic.

                1. The real world in which — by and large — most all “basic” research is tied to profit motives.

                  Let me know when I state otherwise, Billy. Enjoy the straw! Baby Jeebus did.

                2. How Accuse Others of you (and how typical), given that my post is calling you out for the use of straw with your setting up a position that no one has argued for in “government requiring” as you evade the item that IS at point (profit motive driven).

                3. my post is calling you out for the use of straw with your setting up a position that no one has argued for in “government requiring” as you evade the item that IS at point (profit motive driven).

                  And as we watched the br@in-damaged illiterate m0nkey dance about in a crooked circle, we passed around a bottle of beer. And laughed.

  3. 1

    Thanks for the reminder of how broadly the “printed publication” bar & prior art has been interpreted by the courts. [Including the word “printed”].
    As previously noted, since publication prior art can be used faster, more effectively, and far less expensively, in an IPR than in saving it for a trial, litigation statistics in recent years should logically reflect reductions in this defense in suits going to trial.
    Also, I have had heard internal reports from one industry that dated copyright registered published product service manuals for prior products have been by far the most effective tools for obtaining low cost trial-avoidance licenses, which are far more common than patent suits going to trial. Not surprisingly. Good service manuals may contain specific detailed drawings and descriptions of prior art product features and functions. They can be much easier to prove up as prior art than the physical contents of the earlier products themselves.
    Both are inconsistent with the conclusion above that “catalog, manuals, and brochures were fairly insignificant in the larger scheme of things.”

    1. 1.1

      Also note this additional effect on this statistical analysis, especially re fully anticipatory [102] publication litigation defenses: In recent years, ever since the Sup. Ct. effectively encouraged attorney fee sanctions in patent cases, substantial number of such costly sanctions have been granted against either party persisting with objectively unrealistic suits or defenses. A fully anticipatory publication defense could be a prime example of such a high cost risk discouraging suing or continuing a suit by either patent owners or defendants.

      1. 1.1.1

        Paul’s point here regarding litigation defenses (which may forstall litigation in the the first instance) only reinforces that a proper large scale view is necessary in order to put all of the numbers from the study into a perspective of signal and noise.

        Of course, that larger perspective may be attuned by normalizing the incidences themselves with the much larger universe of actually granted claims (not just granted patents) that serve as the source of litigation potential.

        In other words, the caveat I added to each of the earlier installments of this series applies fully here as well.

        1. 1.1.1.1

          Yes, a larger scale view, including the vast majority of asserted patent disputes that are settled before suit or trial or ended by IPR decisions, would be more relevant.
          But is hard to see how comparing data on patents invalided in D.C. decisions to the vast majority of issued patents whose validity is never, ever, tested in any manner whatsoever, could be considered “normalizing”?

          1. 1.1.1.1.1

            The normalization provides perspective.

            That perspective may include how much noise there may be and how much (relative) signal may be able to be separated from any noise (as well as may point out such things as inherent selection bias) — all of which should be factored into any conclusions (and especially conclusions that then may be attempted to be used to make changes to that same larger context patent system.

            It is always good to be able to notice when the tail of a flea on a tail of a dog may be wagging the dog.

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