Two recent PTAB decisions highlight important developments in qualifying a publication as a reference, available as prior art. In one case, the PTAB concluded that a printed catalog did not qualify as a printed publication prior art because it was distributed only at a private tradeshow to persons not necessarily skilled in the art. In the other case, the PTAB concluded that a video and associated slide presentation did not qualify as printed publications because these materials were distributed only to experts at a private, invitation-only conference. These decisions interpret precedents from the Federal Circuit and offer simple examples of what type of publications may not qualify as prior art.

Background Authority

Section 311(b) of the patent statute limits the basis for inter partes review to patents and printed publications. Particularly in cases where petitioners rely on prior art such as dissertations, conference slide presentations, video recordings, web publications and the like, the PTAB must determine whether the cited art is actually a prior art publication. The determination of whether a document is a “printed publication” involves 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). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)).

GoPro IPR

In a final written decision dated October 26, 2016, the PTAB concluded that GoPro, Inc. (GoPro) failed to demonstrate that the challenged claims in a patent owned by Contour IP Holding LLC (Contour) were unpatentable. IPR (IPR2015-01080; “the GoPro IPR”) GoPro asserted that the challenged claims were unpatentable in view of, among other references, a GoPro product catalog that included information for a digital video camera. GoPro asserted that there are two standards concerning accessibility: (1) accessible to “the public interested in the art,” and (2) accessible to “persons interested and ordinarily skilled in the art.” Contour argued that a reference is ‘publicly accessible’ upon a showing that the document 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. [Paper 55, page 20, GoPro IPR] The PTAB agreed with Contour:

Accordingly, we apply the following standard, recently enunciated by the Federal Circuit, for determining whether the GoPro Catalog is a prior art printed publication: “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, 815 F.3d at 1348 (citing Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008)) [Paper 55, page 21, GoPro IPR]

Despite the fact that GoPro submitted evidence to support its assertion that the product catalog was disseminated at an action sports trade show and otherwise available to over one thousand attendees, the PTAB concluded that GoPro failed to provide evidence that the trade show was advertised or announced to the public, such that a person interested and ordinarily skilled in the art from the public would have known about it and could have obtained a copy of the product catalog there. The PTAB also found that GoPro failed to provide evidence that the product catalog was disseminated or otherwise made available at the trade show to persons ordinarily skilled in the art. On the other hand, Contour submitted evidence that indicated the trade show was not open to the public and instead only open to trade organization members, and the PTAB agreed:

The [trade show] was not an academic conference or camera industry conference. It was a dealer show for action sports vehicles … To the extent it pertained to digital video cameras at all, it did so only tangentially—as one type of “accessory” for riders of certain action sports vehicles. Further, we agree with Patent Owner that, even assuming that “those interested in buying devices” were in attendance at the show, that does not establish that any of those individuals were ordinarily skilled in the art. [Paper 55, page 26, GoPro IPR]

Medtronic IPR

In another recent final written decision dated September 7, 2016, the PTAB concluded that Medtronic, Inc. (Medtronic) failed to demonstrate that the challenged claims in a patent owned by Mark A. Barry (Barry) were unpatentable. IPR (IPR2015-00780; “the Medtronic IPR”) Here, Medtronic asserted that, among other references, a video of a surgical demonstration stored on a compact disc qualified as a “printed publication.” Barry contended that the video was not a “printed publication” because it was not “printed” and the video was not sufficiently available to persons of ordinary skill in the art. Turning first to the question of whether the video is “printed,” the PTAB stated:

A narrated demonstration recorded on CD, as in the Video, satisfies the “printed” requirement of the statute because the CD includes indicia stored on it that defines the content to be displayed, i.e., the “printed component” urged by Patent Owner is found in the indicia stored on the CD or other electronic medium. Thus, the Video is not excluded from the scope of 35 U.S.C. § 311(b) on the sole basis that the Video is not “printed.” [Paper 51, page 9, Medtronic IPR]

But is the video a “publication”? Based upon the evidence submitted by the parties, the PTAB said no:

First, the members of the [group], who received the Video and the Slides, were experts voted into membership by an executive board based on their qualifications and ability to conduct research. Petitioner has not provided sufficient evidence of any other distribution of the Video and Slides. In addition, Petitioner has not shown sufficiently how the Video and the Slides would have been made available outside the [group] to persons of ordinary skill … or how persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, could locate the Video and the Slides. [Paper 51, page 12, Medtronic IPR]

the [group] who received the video were experts voted into membership by an executive board based on their qualifications and ability to conduct research…Petitioner has not shown sufficiently how the video would have been made available outside the [group] to persons of ordinary skill

It is the petitioner’s burden to prove unpatentability by a preponderance of the evidence, and these decisions emphasize the difficulty petitioners may face when relying on “non-traditional” prior art. Petitioners should therefore be prepared to submit sufficient evidence to demonstrate that any prior art relied upon was in fact printed and accessible to persons interested and ordinarily skilled in the art. Likewise, patent owners and even patent applicants should scrutinize prior art applied, e.g., in an IPR petition or in an office action, to determine whether its status as prior art may be challengeable based on the developing case law from the PTAB.