St. Louis patent attorney Bryan Wheelock spoke to Law360 about the fight over printed publications and prior art. The opposing parties were not competing businesses, however. They are the Federal Circuit and the Patent Trial and Appeal Board.

The difference in opinion recently played out in GoPro, Inc. v. Contour IP Holding LLC, in which the PTAB held that a catalog disseminated at a trade show for motorcycle and recreational vehicle dealers in 2009 did not count as prior art because it was not publically available. The catalog in question was GoPro’s own catalog, which they were using to invalidate a patent owned by competitor company Contour in an Inter Partes Review proceeding.

The Federal Circuit, however, has taken a far more inclusive approach to prior art and printed publications. In vacating the PTAB’s decision in July this year, they have emphasized the need for the PTAB to do the same.

This raises a number of questions, including what counts as publically accessible and do persons who are both interested in the technology and ordinarily skilled in the art need to be in attendance.

To the first question, the Federal Circuit has taken a lax approach in the past. A presentation given to spinal surgeons counted in a recent case concerning a spinal-straightening patent, for example, as did materials from a Food and Drug Administration meeting that were later posted online and publically available. If a person can find the material using “reasonable diligence,” in other words, it is likely that it will count.

“The type of things the Federal Circuit has considered prior art in the past are really kind of obscure,” Wheelock said. “So it’s not too surprising the Federal Circuit would get to this result in the GoPro case. The surprise was the patent office and PTAB wasn’t already there.”

Regarding the second question, the Federal Circuit’s ruling seems to suggest that printed publications still count if they are shown to people interested in the art (motorcycle and recreational vehicle dealers and enthusiasts, in this case), although not necessarily skilled in the art (meaning that the event was not open to, or even targeted to, camera professionals).

Despite the ambiguity, attorneys note that the Federal Circuit has acknowledged a need for a multi-factor test to determine public accessibility, including the size of the event, the expertise level of the audience, if non-disclosure agreements are necessary to view certain publications, and if there is a reasonable expectation that publications will be shared.

Until a test is put in place, innovators and patent owners should be careful about what they put in printed publications, and should use confidentiality agreements to protect any invention for which a patent application has not yet been filed.

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Read Wheelock’s blog post on GoPro v. Contour.

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