The Court of Appeals for the Federal Circuit's recent decision in In re Lister, 583 F.3d 1307 (Fed. Cir. 2009), provides important guideposts for assessing whether prior art is publicly accessible for purposes of the “printed publication” bar under § 102(b). The case is likely to be frequently cited by litigants asserting a § 102(b) invalidity defense.

The applicant, Dr. Lister, had submitted a manuscript of his invention — relating to a method of playing golf that permitted the use of a tee on most shots — to the U.S. Copyright Office more than a year before he filed his patent application. Based on this earlier disclosure, the Board of Patent Appeals and Interferences (BPAI) affirmed the patent examiner's § 102(b) rejection.

Dr. Lister appealed to the Federal Circuit, and the issue presented was whether the manuscript was publicly accessible based on its submission to the Copyright Office or its availability on commercial Westlaw and Dialog databases.

The court's analysis highlights the fact-dependent nature of the public accessibility inquiry.

As a threshold matter, the standard for public accessibility is “whether an interested researcher would have been sufficiently capable of finding the reference and examining its contents” in light of “the facts and circumstances surrounding the disclosure.” While the cataloging and indexing of a reference are relevant considerations, “neither cataloging nor indexing is a necessary condition for a reference to be publicly accessible.” Moreover, “a reference can be considered publicly accessible even if gaining access to it might require a significant amount of travel.” And, “once accessibility is shown, it is unnecessary to show that anyone actually inspected the reference.”

Turning to the facts at hand, the court found that “any member of the public who submits a proper request” to the Copyright Office “is capable of gaining access to the manuscript without any need for special authorization.” However, the fact that the Lister manuscript was available at the Copyright Office “does not end our inquiry. We must also consider whether anyone would have been able to learn of its existence and potential relevance prior to the critical date.”

Because the Copyright Office's automated catalog was not sorted by subject matter and could only be searched by either the author's last name or the first word of the title of the work, it was undisputed that the automated catalog alone was insufficient to support a finding of public accessibility.

However, the court reached a different conclusion with respect to the Westlaw and Dialog databases. Because those databases permit the searching of titles by keyword, the court found that a person of ordinary skill “exercising reasonable diligence” would have been able to find the Lister manuscript. Accordingly, the manuscript was publicly accessible as of the date that it was included in either the Westlaw or Dialog databases.

Finally, the court considered whether there was sufficient evidence to show that the Lister manuscript was publicly posted on Westlaw or Dialog more than one year before the application filing date. In answering that question in the negative, the court rejected the government's argument based on Dr. Lister's inclusion of his manuscript on the IDS, and found that “the government has not identified any evidence of the general practice of the Copyright Office, Westlaw, or Dialog with regard to database updates. Absent such evidence, we have no basis to conclude that the manuscript was publicly accessible prior to the critical date.” As a result, the court vacated the BPAI's decision affirming the examiner's § 102(b) rejection.

Conclusion

In re Lister provides useful guideposts for developing a § 102(b) defense. The ruling notes that keyword-searchable databases such as Westlaw or Dialog provide a higher level of “public accessibility” than the Copyright Office's automated database. The ruling also highlights the importance of developing the specific facts needed to establish a § 102(b) defense, including the date a prior art publication was first publicly disclosed. In all likelihood, the Lister manuscript was posted on Westlaw or Dialog close to the date it was submitted to the Copyright Office, and qualified as a § 102(b) printed publication. However, the government's failure to conduct discovery to nail down that point led to the adverse outcome for the USPTO.