A Tale of Two Printed Publications
| November 8, 2018
GoPro, Inc. v. Contour IP Holding LLC;
November 1, 2018
Before Reyna, Wallach, and Hughes. Opinion by Lourie.
and
Acceleration Bay LLC v. Activision Blizzard, Inc.
November 6, 2018
Before Prost, Moore, and Reyna. Opinion by Moore.
Summary
It was a flexible standard. It was a narrow standard. It was a sales catalog at a trade show that those of ordinary skill in the relevant art may not have attended. It was a technical report uploaded to a university subject matter-specific library website. The Federal Circuit determined that the sales catalog was a prior art “printed publications” within the scope of 35 U.S.C. 102, but not the technical report.
Details
Under 35 U.S.C. 102, a person is entitled to a patent unless the invention was described in a “printed publication” either more than one year prior to the date of application for patent in the U.S. (pre-America Invents Act) or before the effective filing date of the claimed invention (America Invents Act).
A reference is a “printed publication” if it is sufficiently accessible to public interested in the subject matter or art. That is, was the reference “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”? In re Wyer, 655 F.2d 221 (CCAP 1981). The determination of “public accessibility” is therefore central to the inquiry of whether a reference qualifies as a prior art “printed publication”.
- “Public accessibility” is a flexible inquiry…
Both GoPro, Inc. v. Contour IP Holding, LLC and Acceleration Bay, LLC v. Activision Blizzard, Inc. were appeals from inter partes review decisions by the Patent Trial and Appeal Board.
In the GoPro case, Contour owned the patents at issue (U.S. Patent Nos. 8,890,954; and 8,896,694), which related to wearable digital video cameras with wireless connection capability and remote image acquisition control and viewing functions. Contour sued GoPro for patent infringement, targeting GoPro’s wearable wireless cameras suitable for use during action sports. GoPro initiated the IPR to invalidate Contour’s patents.
GoPro’s invalidity challenges all relied on a GoPro sales catalog as prior art. The GoPro catalog was first distributed to attendees at a dealer trade show, and was subsequently made available as necessary to customers, dealers, and retailers through GoPro’s website, direct mail, and other channels of distribution.
The Board determined that the GoPro catalog was not a “printed publication” within the statutory meaning, and since all the invalidity challenges rose or fell with the prior art status of the GoPro catalog, the Board upheld the validity of the patents.
The question of the GoPro catalog’s public accessibility was determined solely in the context of the dealer trade show. Approximately 150 vendors and more than 1,000 attendees participated in the trade show. The focus of the trade show was on action sports vehicles like motorcycles, ATVs, snowmobiles, and watercraft, and also on accessories related to such vehicles, including wearable wireless camera of the types made by GoPro, who was a vendor at the trade show.
However, the Board did not find the trade show to have sufficiently targeted those in the relevant art. According to the Board, the show was not advertised or announced to the public, and was not an academic conference or camera industry conference. As such, the GoPro catalog distributed at the trade show would not have been sufficiently accessible to those skilled in the art.
The Federal Circuit found the Board’s interpretation of “public accessibility” to be overly narrow:
We have interpreted § 102 broadly, finding that even relative obscure documents qualify as prior art so long as the relevant public has a means of accessing them… [W]e explained that “[a]ccessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to’ and ‘[i]f accessibility is proved, there is no requirement to show that particular members of the public actually received the information.”….
The case law regarding accessibility is not as narrow as the Board interprets it. The Board focused on only one of several factors that are relevant to determining public accessibility in the context of materials distributed at conferences or meetings…Rather, our case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information. When direct availability to an ordinarily skilled artisan is no longer viewed as dispositive, the undisputed record evidence compels a conclusion that the GoPro Catalog is a printed publication as a matter of law.
The trade show was open to the general public, including those in the relevant art, with no restrictions. The materials and information disseminated at the trade show did not exclude those pertinent to the patented technologies. Moreover, GoPro’s products were designed for use with action sports, and the distribution of the GoPro catalog was similarly unrestricted. Finally, the Federal Circuit emphasized that “the standard for public accessibility is one of ‘reasonable diligence’ to locate the information by ‘interested members of the relevant public’”. The Federal Circuit’s reminder seemed to be that the standard for “public accessibility” is flexible.
- …but apparently not always.
However, in the Acceleration Bay decision less than a week after the GoPro decision, the Federal Circuit seemed to contradict their articulated flexible approach to determining public accessibility.
Acceleration Bay owned the patents at issue (U.S. Patent Nos. 6,829,634; 6,701,344; and 6,714,966). The patents concerned generally computer network technologies that allowed communication and information broadcast among multiple participants on a network (for example, in a game environment for massively multiplayer online role-playing games (MMORPGs) such as World of Warcraft). Acceleration Bay asserted their patents against a number of game companies, who in turn challenged the patents’ validity.
The invalidity challenges relied as prior art on a technical report that was uploaded to a university’s Computer Science and Engineering (CSE) Technical Reports Library website.[1] The website was maintained by the university’s CSE department, and each uploaded technical report was assigned a unique identifier based on the year it was uploaded and the order in which it was uploaded relative to other technical reports. The website allowed users to sort technical reports either alphabetically by authors’ last names or chronologically by the year of upload. The website’s advance search function theoretically allowed users to search for specific articles by keywords, but that search function was spotty at best.
The question was whether those interested and ordinarily skilled in the relevant art could locate the technical report with reasonable diligence. The Board decided that they could not.
The Board’s decision was based on their determination that the technical report was not “meaningfully indexed” to enable a person skilled in the art exercising reasonable diligent to find it. The Board focused in particular on the patent owner’s evidence documenting their failed attempt to locate the technical report using the website’s advance search function and keywords from the author’s name and the document title.
The Federal Circuit agreed with the Board’s determination. Noting “‘public accessibility’ requires more than technical accessibility”, the Federal Circuit referred more than once to the failure of the website’s advance search function to return the technical report of interest. With this apparent focus on “searchability”, the Federal Circuit agreed with the Board that “although [the technical report] was indexed by author and year, it was not meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it, which is a proper consideration under our precedent.”
The Acceleration Bay decision seems inconsistent not only with the flexible approach taken in GoPro, but also with In re Hall, 781 F.2d 897 (Fed. Cir. 1986). In Hall, a single copy of a doctoral dissertation shelved in a “special dissertation section” of the general stacks of a university library, and catalogued in a “special dissertations catalogue” within the library’s general catalogue, was sufficiently accessible to be a printed publication. Yet, a document that was available and catalogued in a “special CSE Technical Reports section” of a university’s virtual library system lacked public accessibility. The technical report, uploaded in 1999, was one of only a dozen or so articles uploaded to the CSE Technical Reports Library website that year, and was listed in a search of the CSE Technical Reports database by year. These facts would seem to make Acceleration Bay the electronic counterpart to Hall, but curiously, those facts were not presented to the Board or the Federal Circuit. It is also uncertain whether those facts would have mattered in light of the Federal Circuit’s requirement for “meaningful” indexing (and apparently, a working search function).
Takeaway
The question of whether a document is a prior art printed publication would unlikely come up in daily prosecution work, since Examiners predominantly cite patent documents and/or journal articles that are not obscure. If the question does arise, it may be important to show a “road map” (for example, the search engine used, the combination of search keywords, etc) for locating the document.
The Acceleration Bay decision also touches on issues relating to claim interpretation and obviousness, but those discussions are fairly unremarkable in that they follow closely existing standards. The decision does include this gem on claim drafting:
Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope…We see no beneficial purpose to be served by failing to include a transition word in a claim to clearly delineate the claim’s preamble from the body, and we caution patentees against doing so.
The Federal Circuit was addressing one of the asserted claims that read “A computer network for providing an information delivery service for a plurality of participants, each participant having connections to sat least three neighbor participants, where in an originating participant…”. Occasionally when faced with a claim that does not use the conventional format for a U.S. claim, it would be prudent to rewrite the claim to make clear where the claim begins and ends.
[1] It was undisputed that both the GoPro catalog and the technical report were distributed or published before the critical dates of the patents against which the documents were asserted.
