A catalog disclosed at an event not open to the public may still be considered a prior art under 35 U.S.C. § 102(b)
| August 8, 2018
GoPro, Inc. v. Contour IP Holding LLC
July 27, 2018
Before Reyna, Wallach, and Hughes. Opinion by Reyna.
Summary
The United States Court of Appeals for the Federal Circuit (the CAFC) found a catalog distributed during a trade show targeting dealers as opposed to the public can still be considered a printed publication under 35 U.S.C. § 102(b). The CAFC stated that the dealers encompassed the relevant audience such that a person ordinarily skilled and interested in the art exercising reasonable diligence should have been aware of the show. Additionally, there were no restrictions placed on the dissemination of the publication, and the catalog was intended to reach the general public. The CAFC therefore vacated the Patent Trial and Appeal Board’s decision and remanded for the Board to consider the merits of the petitioner’s obviousness claims.
連邦巡回控訴裁判所（CAFC）は、販売業者のみが参加可能な展示会で配布されたカタログでも、先行技術文献となると判決した。展示会は、一般に向けたものではなかったものの、販売業者は、当該技術関連者（relevant audience）に含まれ、合理的なデリジェンスの下、当業者や当該技術に関心がある者は、その展示会について知り得たであろうと判示した。また、カタログには配布制限が設けられていなかったため、一般に配布されることを意図した物であったと示した。よって、CAFCは、特許審判部の判断を破棄し、カタログが先行技術文献であるとした上で、自明性について検討するように、審判部に本件を差し戻した。
Details
GoPro, Inc. petitioned for inter partes review (IPR) of Contour IP Holding’s U.S. Patent Nos. 8,890,954 and 8,896,694, relating to action sport video cameras or camcorders capable of remote image acquisition control and viewing. The IPR was instituted based on obviousness grounds, where GoPro relied on its sales catalog (the GoPro Catalog) distributed prior to the critical date of September 13, 2009.
Of critical importance to the decision of the Board was a declaration from a GoPro employee, stating that the GoPro Catalog was distributed during an annual dealer trade show organized by Tucker Rocky Distributing, a trade organization focused on action sports vehicles as well as related apparel, parts, and accessories. The relevant trade show took place from July 23 to July 27, 2009, prior to the critical date of September 13, 2009, and the GoPro Catalog was displayed and distributed to attendees.
Contour argued that GoPro did not demonstrate that the GoPro Catalog was a prior art. In supporting its argument, Contour provided a screenshot of Tucker Rocky’s website, which explained Tucker Rocky as being a wholesale distributor that does not sell to the public. In addition, Contour provided a Facebook screenshot from the 2013 Tucker Rocky Dealer Show, which stated that the show was open to dealers but not the public.
The Board stated in its decision that the GoPro Catalog did not qualify as a prior art printed publication under 35 U.S.C. § 102(b), concluding that GoPro had not met its burden to show that the GoPro Catalog was disseminated or otherwise made available such that persons interested and ordinarily skilled in the art and exercising reasonable diligence could have found it. The Board explained that the dealer show was not an academic conference or camera industry conference, but a dealer show, and because the event was not 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, GoPro failed to satisfy the § 102(b) requirement.
On appeal, the CAFC disagreed, finding that the case law regarding accessibility is not as narrow as was interpreted by the Board, and the GoPro Catalog was sufficiently accessible, satisfying the § 102(b) requirements. While the event was only open to dealers, the CAFC stated that “a dealer show focused on extreme sports vehicles is an obvious forum for POV [point of view] action camera” and “dealers of POV cameras would encompass the relevant audience such that a person ordinarily skilled and interested in POV action cameras, exercising reasonable diligence, should have been aware of the show.” In addition, there was no restriction placed on the dissemination of the GoPro Catalog, and the catalog was intended to reach the general public. For this reason, the CAFC concluded that the GoPro met its burden, and the GoPro Catalog is a printed publication under § 102(b).
Therefore, the CAFC vacated the Board’s decision and remanded for further proceeding to consider the merits of GoPro’s obviousness claims.
Takeaway
35 U.S.C. § 102(b) is interpreted broadly. The expertise of the target audience is not a dispositive factor in determining accessibility of a publication, and factors such as 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 must also be considered.
