by Dennis Crouch
It is interesting that we continue to have cases fighting over what counts as a “printed publication” under 35 U.S.C. § 102.
In Weber, Inc. v. Provisur Technologies, Inc., Nos. 2022-1751, 2022-1813 (Fed. Cir. Feb. 8, 2024), the PTAB sided with the patentee, but on appeal the Federal Circuit reversed — finding that Weber’s food slicer operating manuals was a printed publication. The case shows that documents with quite limited distribution, such as operating manuals sent to ~10 customers, may still meet the public accessibility standard for prior art depending on the circumstances of disclosure and expectations around further dissemination.
Although this case involves pre-AIA 35 U.S.C. § 102(b), the same “printed publication” language is found in post-AIA 35 U.S.C. § 102(a).
The case involved a dispute between competitor food slicer manufacturers Weber and Provisur. Provisur sued Weber for infringing two of its patents relating to high-speed mechanical slicers used to slice and package meats and cheeses. U.S. Patent Nos. 10,639,812 and 10,625,436. Weber filed two inter partes review petitions asserting that the patents were invalid as obvious based on Weber’s own operating manuals for its commercial slicers, in combination with other prior art references. IPR2020-01556, IPR2020-01557.
The Board initially found in its institution decisions that Weber provided enough evidence to support the public availability of the manuals as printed publications. But in its final written decisions, the Board changed course and found that the manuals were not sufficiently publicly accessible due to limited dissemination and confidentiality restrictions.
On appeal, the Federal Circuit against the patentee. Writing for the panel, Judge Reyna explained that “[t]he touchstone of whether a reference constitutes a printed publication is public accessibility” and that “[t]he standard for public accessibility is whether interested members of the relevant public could locate the reference by reasonable diligence.”
The scope and content of the prior art is a question of fact. Thus, the Federal Circuit gave deference to the PTAB’s determination of inadequate public accessibility, but ultimately concluded that the Board’s decision was not supported by substantial evidence:
The record evidence shows that Weber’s operating manuals were accessible to interested members of the relevant public by reasonable diligence. For instance, Weber employees testified that the operating manuals could be obtained either upon purchase of the Weber food slicer or upon request directed to a Weber employee.
Id. The Board had relied heavily on the Federal Circuit’s decision in Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009). In Cordis, the court faced the question of whether two two academic monographs describing an inventor’s work
distributed to several university and hospital colleagues as well as two companies interested in commercializing the technology. Although there was no express confidentiality agreement, the court found that “academic norms” included an expectation that the disclosures would remain confidential. With regard to the distribution to commercial entities, the court found found that the inventor had requested and expected confidentiality. The court noted the lack of evidence showing these types of entities typically made such documents publicly available or that they had incentives to do so. Dr. Palmaz also testified that confidentiality was requested and honored in practice. The written agreement with one of the companies expressly disclaimed any confidentiality obligations, but the court still found that the document was kept within the company and that the expectation of confidentiality was reasonable.
On appeal, the Federal Circuit distinguished Cordis from the situation in Weber:
Weber’s operating manuals were created for dissemination to the interested public to provide instructions about how to assemble, use, clean, and maintain Weber’s slicer, as well as guidance for addressing malfunctions that users might encounter.
Id. Somewhere between 10 and 40 entities received the manuals. But, the Federal Circuit concluded that “No minimum number of occasions of access is dispositive of the public accessibility inquiry in all cases.” Accessibility does not actually require that it was accessed.
The commercial slicers were quite costly and so the manual was only distributed to this small number of companies. The manual also included a copyright notice that the Board found prevented substantial distribution. On appeal, the Federal Circuit found these limits inadequate. The purchasers were the interested public that obviously could “afford the high-cost slicers.” And, “Weber expressly instructed customers who were re-selling their slicers to transfer their operating manuals to purchasing third parties.”
I wonder how the court would have ruled if the manuals distributed to customers included a stronger confidentiality expectation.
>I wonder how the court would have ruled if the manuals distributed to customers included a stronger confidentiality expectation.
Didn’t there use to be a separate indexing/cataloguing requirement i.e., that old, old case in which a shelved-in-a-public-library thesis wasn’t considered sufficiently “public,” despite the complete lack of any confidentiality requirements.
OTOH, is sounds like the machines themselves had been actually sold, so it’s all moot? OTHOOH, would that kick the case into an Article III Court?
Correct – But that had more to do with recall ability.
An item not so indexed could literally be viewed as having never existed precisely because without an index, someone (even the putative legal fiction) could NOT find it.
This situation though is not that situation.
I wonder whether the fact of a sale is enough to make the manual available/published.
Suppose the sale is made as part of a joint development venture, with a clause that keeps the confidential the results of running the machine, and another one that forbids the buyer from disposing of the goods to a third party.
Compare that with a normal arms length sale that leaves the buyer free in law and equity to dispose of the purchased goods as they please.
In neither case does the sale, as such, make the manual available to the public, but in one scenario it’s “published” the other not. How about that?
Or (like under the EPC) is a sale free of rrestrictions on the purchaser in itself enough to make the manual available to at least one member of “the public”, namely that purchaser?
Um yeah, that does not touch his hypo.
The confidentiality of a product and the confidentiality of a service manual for a product are two separate fact issues. But they have in common that a confidentiality agreement per se, without meeting the other requirements for maintaining trade secrecy or confidentiality, is not an enforceable trade secret and may not preclude prior art. For example, I had one case in which a prior public use defense for a machine against a latter-filed patent application of another company could be established in spite of a confidentiality agreement between the machine provider and user. Because I found out that machine had been placed in a very public hallway area where anyone could come by to look at it as much as they wanted to.
Well Paul, looking at it as much as you want won’t necesarily make available to you the internal workings of the machine There is a UK case (Lux) on a claim directed to software to control traffic lights. The evidence proved (but it was very much touch and go) that somebody camping out at the lights-controlled cross-roads for long enough could deduce the invention, whereby it had been made available to the public by the prior use. And then there was another UK case concerning use on private ground, in a field, of an agricultural seed drill that included an inventive tine. Afterwards, there was a patent application. Did that use make the invention available to the public? It was a close call.
And then there was the famous concertina garden hose case, where the use was in an open front garden, next to a busy street. Another close call with an outcome depending on the exact details of what was claimed. I imagine those concertina hoses are also by now well-known also in the USA. A nice invention, I thought.
Max, even in the EPO there is a decision some years back that as soon as a shipped machine reaches the loading dock of a customer [where there is no one preventing someone from opening its doors to look inside, even if they don’t] it is publicly available prior art.
BTW, in the U.S. many such cases turn on the U.S. “on sale” bar instead, since that date is often earlier than the shipping arrival or installation date of a product. That legal and timing difference lead, in one case I was indirectly involved in, to an invalid U.S. patent application and a valid EPO application.
Yes, Paul, another one of the many trans-Atlantic traps that can catch out an unwary attorney.
In general, I’d say any sale is a “sale” in the US i.e., regardless of whatever CDA/JDA you draft (citing Helsinn).
My understanding is that this is an area where US practice differs from Europe. But, I’m not a litigator, so my legal advice tends to be conservative.
how about “offer for sale?”
This one seems totally straightforward. A manual for a contraption that’s given to purchasers of said contraption is publicly accessible? Yup, sounds about right to me.
Re: “Although this case involves pre-AIA 35 U.S.C. § 102(b), the same “printed publication” language is found in post-AIA 35 U.S.C. § 102(a).”
True, but now immediately followed by “or otherwise available to the public.”
Obviously, many complex commercial products do not have all of their details and features disclosed in patents. Service manuals like this are often the only way a threatened manufacturer can prove their own prior products contained parts or features claimed in a later-filed patent of another. They are important to retain, and important to be dated, including the date in the copyright notice. I have seen numerous foreign patent threats removed by service manuals showing the claimed feature was in a similar prior U.S. product. Major companies with competent patent departments carefully retain their product service manuals.
If one is being sued on a food slicer, as here, looking for service manuals of that or other prior commercial food slicers [and those products themselves] is an obvious place to look, at least for a professional prior art searcher doing the kind of thorough prior art searches done for litigation and IPRs. [It is a good example of a kind of prior art the PTO does not normally have the resources to find in its relatively brief application examination searches.]
As for this allegation of mere copyright notices provided any degree of confidentiality, if that were true it would impact almost all publications. Furthermore, copyright only protects copying, not procuring or reading existing copies or originals. With no confidentiality agreement or trade secret violation, making a handful of copies for litigation, even if not agreed to, or fair use, would be a copyright infringement too small to be worth enforcing or to impede litigation discovery.
P.S. Even if a patent owner could disqualify a product service or repair manual as a publication in an IPR, if its disclosure [of what was in a prior product] was highly relevant to the claims, the defendant is still free to produce one of those actual prior products itself, and its sale or public use dates, as prior art in the accompanying litigation. As the patent owner is now fully aware of that prior art from the IPR, pursuing that litigation further could have consequences.
> the defendant is still free to produce one of those actual prior products itself
The interesting strategic choice is that the infringer chose to fight in the PTAB despite the issues with the manuals (and remember, the Board found that the operating manuals were NOT prior art, so it wasn’t a slam dunk)
So, why did they make that choice? PTAB is a friendlier forum wrt obviousness determinations? Free second bite at the apple (litigators, how does “reasonably could have raised” estoppel work here)?
“I wonder how the court would have ruled if the manuals distributed to customers included a stronger confidentiality expectation.”
Wouldn’t have made a spit of difference.
Not with hand-waving, dust-kicking patent-killer masters at the helm.
DC “ I wonder how the court would have ruled if the manuals distributed to customers included a stronger confidentiality expectation.”
To be clear, there was not ANY “confidentiality expectation” with respect to this operating manual. The PTAB got this case completely wrong.
Oh, the hindsight! The hindsight!
These decisions seem so wholly arbitrary and divorced from any kind of reality as to where and how PHOSITA would actually seek & find pertinent publications. They just seem to serve as legal fiction reflecting the text, rather than the intent of the statue.
A healthy balance between formalism & objective reality would seem to be a good goal….
But the publications do serve to demonstrate that the accused infringer independently possessed the invention, which seems to sort of suggest obviousness?
I didn’t realize you were such an expert on the public accessibility of instruction manuals for industrial meat slicers.
“ A healthy balance between formalism & objective reality would seem to be a good goal….”
The CAFC’s framework, applied correctly here, is the healthy balance. Sometimes killer prior art exists that the patentee in question wasn’t aware of or was unable to find on their own. Those are the breaks.
You have exactly zero room marty to speak of the intent of the statute.
reality… seek and find…?
You do know that PHOSITA is NOT meant to be a real person, right?
You do know that PHOSITA reflects the State of the Art, right?
Where – exactly – would you draw this point of “healthy balance?”
“just seem to serve as legal fiction“…
Yeah, that is what it is supposed to do.
anon said:
>You do know that PHOSITA is NOT meant to be a real person, right?
You do know that PHOSITA reflects the State of the Art, right?
Yes, the PHOSITA is an abstract concept used to invalidate patents for things that are novel, non-obvious, and useful.
NOIP,
I am going to have to push back my friend – “is an abstract concept used to invalidate patents” is a MISapplication (per se) of the concept.
Sure, it CAN be used as such. BUT such use should be exceedingly rare, given that proper examination should have already applied that metric, and ANY granted patent should already pass that ‘use’ of the concept.
Perhaps the ‘quibble’ should NOT be “B A D patents,” but B A D examination? And THAT would need recognize that Type I errors are at least matched with Type II errors, given the historical FACT of the patent office’s attempts to equate quality with “just say NO.”
Nope, see No. 5 paragraph 2 above.
I also vaguely recall Sup. Ct. patent decision a few years ago that said that if you start making a product like some other companies commercial product, and argue you were innocent of their patents because you did an infringement clearance search, the fact that you did not even tell your infringement searcher to do a patent assignment search for that companies patents can be held against you.
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