Feature

Printed Publications and Persons of Ordinary Skill

Did the PTAB in GoPro v. Contour IP Holding Apply an Overly Restrictive Standard?

By Joel D. Sayres and Doowon R. Chung

©2017. Published in Landslide, Vol. 10, No. 2, November/December 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

An inventor is not entitled to a patent if his or her invention was already described in a “printed publication” before the effective filing date.1 This concept seems simple enough. However, the ques- tion of what constitutes a “printed publication” can be tricky. What sort of references are considered printed publication? What level of public dissemination or accessibility is required? Is it necessary that the public at large can access a reference for it to constitute invalidating prior art, or is it sufficient that only certain members of the public have such access? Is it necessary that such members of the public view, understand, and retain the teachings of the reference? Do product catalogs distributed by a company to potential customers or resellers at a trade show qualify?

An appeal of a Patent Trial and Appeal Board (PTAB) decision that gets to the heart of these issues is currently pending before the Federal Circuit, although the case itself has received surprisingly little attention. In GoPro, Inc. v. Contour IP Holding LLC, the PTAB concluded that a product catalog offered by an inter partes review petitioner did not constitute a “printed publication” under pre-AIA 35 U.S.C. § 102(b), even though the petitioner submitted evidence that the catalog was distributed to hundreds of attendees at a trade show, without any restriction on dissemination.2 The PTAB determined that even if the attendees at the trade show were members of the public interested in buying petitioner’s products, this was insufficient because the petitioner did not offer evidence that the attendees included “persons ordinarily skilled in the art,” as specifically defined in the proceeding.3 Because both grounds of unpatentability offered by the petitioner relied on the catalog, the PTAB concluded that the petitioner could not demonstrate that any of the challenged claims were unpatentable.4

At first blush, this may not seem like a remarkable decision. Indeed, the PTAB based its conclusion on the language set forth in numerous Federal Circuit decisions—language that appears to require a showing that a putative prior art reference was accessible to “persons ordinarily skilled in the subject matter or art” before it will be considered a “printed publication” under §102. However, a closer look at the intent and judicial interpretation of the “printed publication bar” suggests that the PTAB may have adopted an overly rigid standard for showing “public accessibility” that is in tension with the statute’s underlying purpose. The decision, if affirmed by the Federal Circuit, may have considerable consequences for patent challengers relying on prior publications for invalidity, and may lead to patents surviving review even though they recite inventions that were already in the public domain.

The GoPro v. Contour PTAB Decision

In GoPro v. Contour, GoPro filed two IPR petitions contending that the claims of US Patent Nos. 8,890,954 and 8,896,694 were unpatentable in view of a “GoPro catalog,” along with other references.5 The GoPro catalog included information relating to a digital video camera attached to a motor helmet.6 GoPro submitted an employee’s declaration attesting that the GoPro catalog was distributed to potential customers at the 2009 Tucker Rocky Dealer Show—a trade show directed at dealer and vendor members in the motorcycle and other action sports vehicles industry.7 GoPro’s employee testified that the trade show had over 1,000 attendees and that hundreds of copies of the GoPro catalog were distributed without restriction to attendees.8

In its final written decision, the PTAB held that the GoPro catalog was not a printed publication and thus not prior art to the challenged patents.9 Relying on the language from several Federal Circuit decisions, the PTAB concluded that a reference is considered “publicly accessible” and therefore a prior art printed publication under §102 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.”10 The PTAB determined that the GoPro catalog did not meet this standard. First, the PTAB concluded that the petitioner provided “no evidence that the 2009 Tucker Rocky Dealer 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 GoPro Catalog there.”11 Second, the PTAB held that there was “no evidence that the GoPro Catalog was disseminated or otherwise made available at the 2009 Tucker Rocky Dealer Show to persons ordinarily skilled in the art.”12 In this regard, the PTAB noted that the petitioner did not provide any evidence that persons ordinarily skilled in the art, as defined by the PTAB, would have been in attendance at the trade show.13

GoPro filed a request for rehearing in which it argued that the PTAB had misapprehended the printed publication case law by requiring GoPro to show accessibility specifically by persons ordinarily skilled in the art.14 The PTAB rejected GoPro’s motion for reconsideration, reaffirming “that the appropriate standard is that set forth in Blue Calypso.”15

Is the Standard Too Rigid for Determining Whether a Reference Is a “Printed Publication”?

Courts Focus on “Public Accessibility” as the Key Inquiry

Section 102 of the Patent Act precludes inventors from getting a patent on an invention already described in a “printed publication” before the effective filing date of the claimed invention.16 Ultimately, Congress intended to make sure that the benefits of a patent would only go to an inventor if the public were getting adequate consideration in return—and there could be no consideration if the invention was already in the public’s possession.17 In other words, “in consideration for the patent grant, something must be given to the public which it did not have before.”18 Thus, the printed publication bar of §102 “was designed to prevent withdrawal by an inventor, as the subject matter of a patent, of that which was already in the possession of the public.”19 The bar “operates upon the theory that the invention in controversy is in the public domain, and once there, is no longer patentable by anyone.”20

But what does it mean for an invention to be “in the possession of the public,” or “in the public domain”? Courts have grappled with this question, and, based on the intent of the printed publication bar, have come to a rather unified answer: “[T]he key inquiry is whether or not a reference has been made ‘publicly accessible.’”21 Indeed, “throughout [Federal Circuit] case law, public accessibility has been the criterion by which a prior art reference will be judged for the purposes of § 102(b).”22 “This follows logically from the theory that the patent grant is in the nature of a contract between the inventor and the public. Hence, if knowledge of the invention is already accessible to the public there is a failure of consideration and no patent may be granted.”23 While certain early cases treated “printed” and “publication” as separate concepts, with the former directed to concepts of “probability of dissemination” and the latter to “public accessibility,”24 later cases made clear that the statutory term “printed publication” was a unitary concept focused on public accessibility,25 and factors like extent of dissemination and indexing in a library were best viewed as “proxies for public accessibility.”26

Accessibility to a Subset of the Public Interested in the Art Has Been Held Sufficient

The judicial consensus that “public accessibility” is the key inquiry informing whether a reference is in the public domain still leaves open an important question: What, exactly, constitutes public accessibility? How accessible to the public must a reference be before it qualifies as a printed publication? If an academic reference is tucked away in an obscure technical library, or a manual for a unique and little-known product is available only from the product manufacturer, does this qualify? In both cases, the reference is technically accessible to the public—anyone can obtain a copy by going to the library or contacting the manufacturer. But surely most of the public would not know how to obtain the reference, as they would not be familiar with the technology or product at issue, and thus would not know where to look. Under these circumstances, are those references truly “accessible” to the public? In other words, if the reference is, practically speaking, only “accessible” to part of the public, does this still qualify as being in the public domain?

This question was confronted squarely by the predecessor to the Federal Circuit in In re Bayer.27 In Bayer, the Court of Customs and Patent Appeals was faced with the question of whether a copy of a patent applicant’s graduate thesis, which was deposited at the University of Toledo Library and available to members of the applicant’s graduate committee, but not cataloged or shelved as of the relevant date, constituted a “printed publication” and thus invalidating prior art.28 The court framed the issue as “a question of degree, namely, what degree of public accessibility is required for a printed document to qualify as a publication under the statute.”29 Specifically, the court weighed the applicant’s position that “accessibility to the general public is required” against the Board of Patent Appeals and Interferences’ (BPAI) position that “accessibility to any part of the public will suffice.”30 After considering various case law and scholarly commentary, the court concluded that “a printed document may qualify as a ‘publication’ under 35 U.S.C. § 102(b), notwithstanding that accessibility thereto is restricted to a ‘part of the public,’ so long as accessibility is sufficient ‘to raise a presumption that the public concerned with the art would know of [the invention].’”31

Subsequent cases have similarly concluded that the question of “public accessibility” should be determined by whether or not the part of the public “concerned” or “interested” in the subject matter of the invention would be able to access it, as opposed to a more onerous requirement of accessibility to the general public.32 In other words, viewing the question through the eyes of the “interested public” serves as a proxy for the public as a whole. Because that portion of the public is interested in the subject matter, they are in a better position to avail themselves of the reference. Thus, this standard seems intended as a relaxation of an alternative standard that would view the question of accessibility in the context of the general public—a standard that would be harder to satisfy. Whether described as the “interested public” or (as described below) “persons having ordinary skill,” it seems that the focus on this “part of the public” should be viewed as a way to establish accessibility by relevant proxy, not an added barrier that may foreclose otherwise generally available references from being considered “printed publications.”

The Rationale for the Language Relied on by the PTAB in GoPro Is Unclear

As discussed above, the PTAB in GoPro rejected the petitioner’s contention that a reference must merely be accessible to at least “the public interested in the art” to be considered a “printed publication” under §102. Instead, the PTAB concluded that “the majority of cases define the standard as accessibility to persons interested and ordinarily skilled in the art.”33 Specifically, the PTAB cited the Federal Circuit’s decisions in MIT v. AB Fortia,34 Klopfenstein,35 and Suffolk Techs., LLC v. AOL Inc.,36 and applied the following standard, quoted directly from the Federal Circuit’s opinion in Blue Calypso:

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.37

The PTAB therefore, determined that the GoPro Catalog was not a prior art “printed publication” because the petitioner had not shown that (1) the trade show in which the catalog was distributed 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 GoPro Catalog there,” and (2) “the GoPro Catalog was disseminated or otherwise made available at the [trade show] to persons ordinarily skilled in the art.”38

That the PTAB applied this standard is understandable, as it is set forth in several Federal Circuit decisions. However, few if any courts have substantively examined the origin or rationale of this language, which ultimately originates from a 1966 case from the Southern District of New York, I.C.E. Corp. v. Armco Steel Corp.39 In I.C.E., the court considered whether a German patent application reproduced on microfilm and stored in the Library of Congress constituted a “printed publication” under Section 102. The court noted that “courts have failed to enunciate a uniform standard of what constitutes a ‘publication,’” including whether (a) “a prior disclosure anticipates an invention only if it is in ‘general circulation’ or ‘on sale,’” or (b) “there must be a sufficient disclosure to raise a presumption that the public concerned with the art would know of it,” or (c) “the statute requires no more than that the work be in restricted circulation.”40 The court specifically cited three cases setting forth these respective views: Cottier v. Stimson,41 Camp Bros. & Co. v. Portable Wagon Dump & Elevator Co.,42 and Hamilton Labs., Inc. v. Massengill.43 After considering these authorities and others directed to whether a microfilm is “printed,” the court concluded that a “printed publication” can include a document, including microfilm, if it is shown that the document “has been 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 and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.”44 This is the language often quoted by the Federal Circuit and ultimately relied upon by the PTAB in GoPro.45

However, it is not apparent how the court in I.C.E. arrived at this language, and in particular the reference to persons “ordinary skilled in the subject matter or art.” None of the cases cited by the court use this language or discuss accessibility by reference to a person of ordinary skill in the art. If anything, the cases frame the inquiry as whether members of the public “interested in the subject” or “concerned with the art” would have access to the references in question.46 Moreover, the I.C.E. court itself offered no explanation or guidance about why and how the inquiry should be viewed in terms of accessibility to persons “ordinarily skilled in the subject matter or art.”47

Thus, although the Federal Circuit frequently quotes this language and it was ultimately relied upon by the PTAB in GoPro, it does not appear to be based on any strong legal grounds related to the scope or intent of the “printed publication” bar. It appears that this language made its way into Federal Circuit opinions, and has been re-quoted by the court without much substantive analysis.48 And in most of those cases, the court did not apply a requirement of showing access specifically to persons of ordinary skill in the art as defined in the respective proceeding.49 In short, it may be time for the Federal Circuit to reassess this language.

The GoPro Decision Converts a Relaxed Proxy for Public Accessibility into an Additional Barrier

Aside from the shaky foundations of this legal standard, there are other reasons to question the conclusion of the PTAB. First, as described above, the cases addressing the scope of “public accessibility” have declined to require a showing of accessibility to all of the general public, but rather have determined that accessibility to the “interested public” suffices.50 If one were to adopt “persons interested and ordinarily skilled in the subject matter or art” as the relevant portion of the public by which to assess the inquiry, it still seems intended to serve as a proxy by which to consider public accessibility. It does not seem like an additional requirement or barrier to establishing that a reference is in the public domain. Indeed, the standard itself focuses on whether a person interested and ordinarily skilled in the subject matter or art “can locate” the reference,51 which is consistent with the case law’s emphasis on accessibility, not actual viewing.52 Thus, even if this standard were applied, it suggests that a given reference should be more likely to be found publicly accessible, as a person of ordinary skill in the art would presumably be more likely to locate a reference than someone who is solely “interested” in the subject matter (who, in turn, would be more likely to locate a reference than a member of the general public).

The PTAB in GoPro, however, viewed it as a more restrictive requirement. Despite the petitioner’s evidence of over 1,000 attendees at the trade show and distribution of hundreds of copies of the catalog, the PTAB faulted the petitioner for not introducing evidence that persons of ordinary skill in the art—specifically as defined in that proceeding—would have known about the show and were in attendance. The petitioner introduced evidence that hundreds of copies of the GoPro catalog were handed out to attendees at the trade show who were interested in GoPro’s products (a broader group within the public realm than persons of ordinary skill in the particular art). It seems this should be sufficient to show that the catalog was in the public domain, without further requiring a showing of accessibility to a smaller subset comprised of persons of ordinary skill in the art specifically.

This seems particularly applicable in the context of distribution of product catalogs or manuals. In such cases, the reference in question is often disseminated without restriction to many members of the public (sometimes hundreds or thousands). In cases where the distribution is directed to, for example, product customers or dealers, it is reasonable to presume that such recipients are also interested in the subject matter described therein, whether as a reseller, consumer, or enthusiast.53 In these cases the references are thus clearly accessible (in fact, directly distributed) to the interested public—it can be argued that the subject matter is thereby in the public domain to a greater extent than in cases where a single reference is deposited in a library.54 For this reason, courts and the PTAB have consistently found such catalogs or manuals to be printed publications.55 In short, the PTAB’s conclusion in GoPro, by requiring proof of accessibility specifically by persons of ordinary skill in the art notwithstanding evidence of wide distribution of the product catalog at issue, seems to invert the application and intent of the printed publication bar.

There is, of course, an alternative view. Under this view, a requirement that the reference in question is accessible specifically by persons of ordinary skill in the art is appropriate, because the inquiry should be focused on whether the invention is already known in the relevant art. Within the relevant art, persons of ordinary skill are most suited to disseminating a reference’s teaching, and determining whether or not an invention is new. Thus, the court in I.C.E. focused not only on whether a person of ordinary skill could locate the reference, but also “recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”;56 the court in Jockmus spoke of whether a reference is “fitted to inform the craft”;57 the court in Imperial Glass noted catalogs’ effectiveness in “spreading information among persons skilled in the art”;58 and the Federal Circuit in Klopfenstein considered relevant the expertise of the intended audience as helping determine “how easily those who viewed it could retain the displayed material.”59 In other words, if the “public accessibility” inquiry is properly focused on the extent to which a recipient retains the information to inform the relevant art, then perhaps a requirement of accessibility to persons of ordinary skill in the art is appropriate.

However, this view seems to be the weaker interpretation of cases evaluating the printed publication bar. First and most simply, none of the cases noted above say this, thus such an interpretation is not grounded in any firm rationale. In fact, none of the cases required proof that the reference in question was accessible specifically to persons of ordinary skill in the art.60 Second, the Federal Circuit has made clear that the focus of the printed publication inquiry is on accessibility to the public, not whether anyone ever in fact accessed or saw the reference in question.61 Indeed, “once accessibility is shown, it is unnecessary to show that anyone actually inspected the reference.”62 Thus, how the reference is absorbed by the art, or how persons of ordinary skill in the art make use of it, should be immaterial to the “printed publication” question.

Requiring proof that a given reference was accessible specifically to persons of ordinary skill in the art would lead to peculiar results. For example, even if the evidence was that the GoPro catalog was disseminated to thousands or even tens of thousands of people at the trade show, presumably the reference would still be deemed not to be in the public domain absent evidence that persons with “at least a bachelor’s degree in computer science, electrical engineering, or a similar discipline, and some experience creating, programming, or working with digital video cameras, such as POV action sports video cameras”63 were among the attendees or otherwise had access to the catalog. This seems an odd result. If instead a single copy of the catalog was deposited in a technical library, and literally never seen by anyone ever, it would nonetheless be considered in the public domain.64

Suppose a product manual describing the GoPro device was shipped to hundreds of thousands of customers along with the device. While the customers would presumably be interested in using sports cameras, the manual apparently would not be deemed to be in the public domain absent evidence that the customers included persons of ordinary skill as specifically defined in the proceeding. Or suppose an article describing the GoPro device was published in a magazine directed to mountain bike enthusiasts. Under the standard applied in GoPro, this also presumably would not be found to be in the public domain absent evidence that persons of ordinary skill in the art had access to the magazine.65 Again, this seems contrary to the purpose and intended application of the printed publication bar.

It should be noted that this is not simply an academic exercise. Patent owners are already starting to latch onto the GoPro decision to try to disqualify references from being considered “printed publications.”66 While each case must be evaluated individually, the standard applied by the PTAB seems to heighten the risk that inventions would be allowed to be patented even when such inventions were already in the public domain—thus robbing the public of its “consideration” for the patent grant. It may be time for the Federal Circuit to reopen the book on the “printed publication” bar.

Endnotes

1. See 35 U.S.C. § 102(a) (2017). Before the America Invents Act (AIA), Section 102 precluded issuance of a patent if the claimed invention was described in a printed publication before the date of invention, or more than one year prior to the date of the application. See 35 U.S.C. § 102(a), (b) (pre-AIA).

2.GoPro, Inc. v. Contour IP Holding LLC, IPR2015-01080, Paper 55, at 18-28 (P.T.A.B. Oct. 26, 2016) (hereinafter, “GoPro FWD”).

3. Id. at 25-27.

4. Id. at 28-29. The GoPro appeal involves various other issues, such as whether the factual evidence submitted by the petitioner was undisputed, whether the petitioner sufficiently authenticated the product catalog at issue, and whether the PTAB improperly declined to consider other evidence that the petitioner contends it submitted, including that the petitioner made the GoPro Catalog available through its website, direct mail, and other means of distribution after the trade show. These issues are outside the scope of this article.

5. GoPro, Inc. v. Contour IP Holding, LLC, IPR2015-01080, Paper 1 (P.T.A.B. Apr. 20, 2015); GoPro, Inc. v. Contour IP Holding, LLC, IPR2015-01078, Paper 1 (P.T.A.B. Apr. 20, 2015).

6. GoPro FWD, supra note 2, at 17.

7. Id. at 21-22.

8. Id. at 22.

9. Id. at 28.

10. Id. at 21 (quoting Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016).

11. Id. at 23. The PTAB also noted that the patent owner had submitted evidence indicating that it would have been unlikely that the public would have known about the trade show. Id. at 24.

12. Id. at 25. The PTAB determined that a “person of ordinary skill in the art would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar discipline, and some experience creating, programming, or working with digital video cameras, such as POV action sports video cameras.” Id.

13. Id. at 25-26.

14. GoPro, Inc. v. Contour IP Holding, LLC, IPR2015-01080, Paper 56, at 3-15 (P.T.A.B. Nov. 22, 2016).

15. GoPro, Inc. v. Contour IP Holding, LLC, IPR2015-01080, Paper 60, at 4 (P.T.A.B. Feb. 16, 2017).

16. 35 U.S.C. § 102(a); see also 35 U.S.C. § 102(a), (b) (pre-AIA) (precluding patents for inventions described in a printed publication before invention by the applicant, or described in a printed publication more than one year prior to the filing date of the application, respectively). GoPro involved pre-AIA Section 102. GoPro FWD, supra note 2, at 6 n.4.

17. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 156 (1984) (“Both the novelty and the nonobvious requirements of federal patent law are grounded in the principle that concepts within the public grasp, or those so obvious that they readily could be, are the tools of creation available to all.” (emphasis added)); In re Tenney, 45 C.C.P.A. 894, 898 (C.C.P.A. 1958) (“[U]nless the public so derives benefit, unless the patentee, by his disclosure, adds to the sum of human knowledge, the grant of a patent would, in fact, be a monopoly . . . , and the policy of the patent laws would be frustrated.”).

18. Tenney, 45 C.C.P.A. at 899.

19. In re Wyer, 655 F.2d 221, 226 (C.C.P.A. July 30, 1981) (emphasis added).

20. In re Bayer, 568 F.2d 1357, 1361 (C.C.P.A. 1978) (emphasis added).

21. In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004).

22. Id. at 1350; see also In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986) (“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).”); Ex parte Hershberger, 1953 Pat. App. LEXIS 43, at *8 (Pat. & Trademark Office Bd. App. 1953) (“The required extent of duplication of a publication is not set forth in [the statute] and a single copy of a printed publication available to the general public is sufficient to fall in the category of ‘any printed publication.’”).

23. Bayer, 568 F.2d at 1359-60. The Bayer court thus concluded that “[t]he date on which the public actually gained access to the invention by means of the publication is the focus of inquiry.” Id. at 1361 (emphasis added). Other authorities have similarly viewed “public accessibility” as informing the central question of whether an invention is already in the public domain such that there is no consideration for a patent grant. See William C. Robinson, The Law of Patents for Useful Inventions 305 (Vol. 1, 1890) (“The consideration for the grant of his exclusive privilege is the benefit which he confers upon the public by placing in their hands a means through the use of which their wants may be supplied. If the same means has been already made accessible to them by the inventive genius of a prior inventor, or if though they receive it first from him it is incapable of useful application, no benefit results to them from his inventive act and there is no consideration for his patent.” (emphasis added)); c.f. Gulliksen v. Halberg, 75 U.S.P.Q. 252, 254 (Pat. Off. Bd. App. 1937) (“It seems to us that the intent of the statute was to allow an inventor to dedicate his invention to the public by distribution of legible copies of a description thereof in places where the public could have access thereto . . . .” (emphasis added)).

24. See Wyer, 655 F.2d at 225-26 (discussing evolution of “printed publication” statutory construction); Tenney, 45 C.C.P.A. at 902 (differentiating between the concepts of “printed” and “publication”); Eric W. Guttag, Applying the Printed Publication Bar in the Internet Age: Is It as Simple as Googling for Prior Art?, 16 Va. J. L. & Tech. 66, 77-78 (Spring 2011).

25. See Wyer, 655 F.2d at 225-26.

26. Klopfenstein, 380 F.3d 1350.

27. 568 F.2d 1357 (C.C.P.A. 1978).

28. Id. at 1357-59.

29. Id. at 1360.

30. Id. (emphasis added).

31. Id. at 1361 (emphasis added) (quoting Camp Bros., 251 F. at 607). In Camp Brothers, the Seventh Circuit concluded that a description of an invention in a patent application, which description does not become part of an issued patent due to amendments during prosecution and instead is only discernable by inspecting the application file wrapper, is not a “publication” because of the “practical impossibility” it would place on patentees to search every file wrapper to be sure that his or her invention is not disclosed therein. 251 F. at 607-08. Thus, the court in Camp Brothers focused on the accessibility of the prior disclosure to those “concerned with the art.”

32. See Wyer, 655 F.2d at 226 (“[T]he question to be examined under § 102(b) is the accessibility to at least the pertinent part of the public, of a perceptible description of the invention. . . .”); Cooper Cameron Corp. v. Kvaerner Oilfield Prods., 291 F.3d 1317, 1323-24 (“[R]eports need only be accessible to the interested public . . . .”); Constant v. Advanced Micro-Devices, Inc.,848 F.2d 1560, 1569 (Fed. Cir. 1998) (“Accessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to.”) ; Garrett Corp. v. U.S., 422 F2d 874, 878 (Ct. Cl. 1970) (“The public, for purposes of the statute, constitute that class of persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.”).

33. GoPro FWD, supra note 2, at 20 (emphasis added).

34. 774 F.2d at 1108-09 (Fed. Cir. 1985).

35. 380 F.3d at 1350-52.

36. 752 F.3d 1358, 1364 (Fed. Cir. 2014).

37. GoPro FWD, supra note 2, at 21 (quoting Blue Calypso, 815 F.3d at 1350 (internal quotation marks omitted)).

38. Id. at 23, 25.

39. 250 F. Supp. 738 (S.D.N.Y. 1966).

40. Id. at 741.

41. 20 F. 906, 910 (C.C.D. Or. Aug. 1, 1884).

42. 251 F. 603, 607 (7th Cir. Ill. 1918).

43. 111 F.2d 584, 585 (6th Cir. 1940).

44. 250 F. Supp. at 743.

45. For example, the language from I.C.E. was quoted by the Federal Circuit in Wyer, 655 F2d at 226, which was quoted in Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006), which was quoted in SRI Int’l, Inc. v. Internet Sec. Sys., 511 F.3d 1186, 1194-95 (Fed. Cir. 2008), which was quoted in Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008), which was quoted in Blue Calypso, 815 F.3d at 1348, which was quoted by the PTAB in Go-Pro.

46. See Cottier, 20 F. at 910 (considering whether the “work has been regularly published and is in general circulation; at least, among those interested in the subject”); Camp Bros., 251 F. at 607 (defining publication as “a revelation of an invention so publicly published or disclosed as to raise a presumption that the public concerned with the art would know of it”); Hamilton Labs, 111 F.2d at 585 (determining that a thesis constituted prior art because it was on file at the Iowa State College library and thus available to students, without any reference to persons of ordinary skill).

47. While one interpretation is that the ICE court was subsuming the requirement that a prior art reference be enabling into the issue of whether a reference constitutes a “printed publication,” the court never mentions enablement, but rather focuses squarely on the “printed publication” issue.

48. See supra note 45.

49. See Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 974-75 (Fed. Cir. 2010) (focusing accessibility analysis on “those interested in the business of auto parts”); Iovate Health Scis., Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed. Cir. 2009) (noting ad was “accessible to those interested in the art of nutritional supplements”); In re Natures Remedies, Ltd., 315 F. App’x 300, 303 (Fed. Cir. 2009) (evaluating accessibility based on “interested members of the public”); Kyocera Wireless, 545 F.3d at 1351 (analyzing accessibility for “any member of the interested public”).

50. Supra, § II.B.

51. GoPro FWD, supra note 2, at 21; see also SRI, 511 F.3d at 1196 (evaluating the record for whether “an anonymous user skilled in the art” would have been able to access an FTP server and locate the relevant reference); Bruckelmyer, 445 F.3d at 1379 (noting that the significance of whether references were meaningfully catalogued or indexed was “whether one skilled in the art could locate them”); Garrett Corp., 422 F.2d at 878 (“The public, for purposes of the statute, constitutes that class of persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” (emphasis added)).

52. See infra notes 61-62.

53. See Orion IP, 605 F.3d at 975 (concluding that a promotional catalog distributed and demonstrated to potential car dealer customers qualified as a printed publication “because it was accessible to those interested in the business of auto parts,” without inquiry as to whether such potential customers qualified as “persons of ordinary skill in the art”); Jockmus v. Leviton, 28 F.2d 812, 813-14 (2d Cir. N.Y. 1928) (“A single copy in a library, though more permanent, is far less fitted to inform the craft than a catalogue freely circulated, however ephemeral its existence; for the catalogue goes direct to those whose interests make them likely to observe and remember whatever it may contain that is new and useful.”).

54. See Jockmus, 28 F.2d at 813-14; Imperial Glass Co. v. A. H. Heisey & Co., 294 F. 267, 269 (6th Cir. 1923) (concluding that catalogs “issued for circulation among the trade” constituted printed publications because “[c]ertainly manufacturer’s catalogues so circulated are more effective in spreading information among persons skilled in that art than if the same catalogues were only on file in some public library”).

55. See Orion IP, 605 F.3d at 975; Jockmus, 28 F.2d at 814; Imperial Glass, 294 F. at 269; In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1354-55 (Fed. Cir. 2014); Hilsinger Co. v. Eyeego, LLC, No. 13-cv-10594-IT, 2016 WL 5388944, at *6-8 (D. Mass. Sept. 26, 2016); Bradford Co. v. Afco Mfg., No. 05-cv-449, 2008 WL 570963, at *4 (S.D. Ohio Feb. 28, 2008); L & P Prop. Mgmt. Co. v. Nat’l Prods., Inc., IPR2016-00475, 2017 WL 3085926, at *10 (P.T.A.B. Jul. 19, 2017); HM Elecs., Inc. v. 3M Innovative Props. Co., IPR2015-00482, 2016 WL 1587338, at *11 (P.T.A.B. Apr. 18, 2016).

56. I.C.E., 250 F. Supp. at 743. Again, while this language perhaps suggests that the court may have subsumed the issue of enablement of a prior art reference into the “printed publication” inquiry, the overall opinion gives no indication of this.

57. Jockmus, 28 F.2d at 813.

58. Imperial Glass, 294 F. at 269.

59. Klopfenstein, 380 F.3d at 1351.

60. See supra notes 56-59. While the court in Klopfenstein did note that the reference in question was shown to persons of ordinary skill in the art, it did not require direct proof of this. Instead, the court noted that in cases not involving distribution or indexing, one of the four factors that “aid in resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible” is “the expertise of the target audience.” 380 F.3d at 1350. The court found that the “intended audience” at one meeting in which the reference in question was shown was comprised of persons having ordinary skill in the art, and that the intended viewers at a second meeting in which the reference was shown “most likely also possessed ordinary skill in the art.” Id. at 1351. Thus, Klopfenstein suggests that (1) the expertise of the audience only becomes relevant in cases involving an ephemeral reference that was not distributed nor indexed; and (2) this factor is judged on a relative scale, and does not require proof that the intended audience comprises persons of ordinary skill in the art as specifically defined in the proceeding.

61. See SRI., 511 F.3d at 1197 (“[A]ctual retrieval of a publication is not a requirement for public accessibility….”); Advanced Micro-Devices, 848 F.2d at 1568-69 (“If accessibility is proved, there is no requirement to show that particular members of the public actually received the information.”); Wyer, 655 F.2d at 226 (concluding that six diazo copies of an Australian patent application available at the Australian patent office and five sub-offices were sufficient for the application to constitute a printed publication despite the lack of any evidence “respecting actual viewing or dissemination of any copy of the application”); Tenney, 45 C.C.P.A. at 902-03 (“[O]nce it has been established that the item has been both printed and published, it is not necessary to further show that any given number of people actually saw it or that any specific number of copies have been circulated.”).

62. In re Lister, 583 F.3d 1307, 1314 (Fed. Cir. 2009) (concluding that a reference available from the Copyright Office was publicly accessible despite evidence that no one ever actually requested to inspect the reference).

63. GoPro FWD, supra note 2, at 18.

64. See supra notes 61-62.

65. It could be argued that publication in a magazine with sufficient circulation would qualify absent such evidence because a court could infer that the article was thus available to the general public, and persons of ordinary skill were necessarily members of the general public. However, it seems then that the evidentiary inquiry would be a numbers game based on the extent of circulation—and thus difficult to distinguish from the numbers game of distribution at a trade show.

66. See GlobalFoundaries U.S. Inc. v. Godo Kaisha IP Bridge 1, IPR2017-00935, Paper 8, at 29 (P.T.A.B. June 21, 2017) (arguing that petitioner must show that the references at issue “were disseminated to persons of ordinary skill in the art”); Sprint Spectrum, L.P. v. TC Tech LLC, IPR2017-00771, Paper 9, at 38 (P.T.A.B. May 8, 2017) (arguing that petitioner failed to show that a POSITA as defined in the proceeding would have attended a conference in which reference was purportedly distributed); Dropbox, Inc. v. Synchronoss Techs., Inc., IPR2016-00850, Paper 18, at 17 (P.T.A.B. Feb. 9, 2017) (arguing that petitioner failed to show that a POSITA attended a conference or received a copy of the reference at the conference); Franklin Elec. Co. v. Liberty Pumps, Inc., IPR2017-00113, Paper 7, at 23-25 (P.T.A.B. Jan. 31, 2017) (arguing petitioner failed to show that a manual was disseminated to a POSITA).

Joel D. Sayres

Joel D. Sayres is a partner at Faegre Baker Daniels in Denver, Colorado. He specializes in patent litigation and proceedings before the Patent Trial and Appeal Board.

Doowon R. Chung

Doowon R. Chung is an associate at Faegre Baker Daniels in Minneapolis, Minnesota, where he specializes in intellectual property litigation.