Update: On November 1, 2018, the CAFC issued a modified opinion and an order denying Contour’s petition for rehearing en banc. The modified opinion is consistent with the original petition, discussed below, insofar as the PTAB decision was vacated and remanded, but adds the following statement at page 8: “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 modified opinion also deleted the following statements, parts of which were quoted in the blog, below: “Contrary to the Board’s conclusion, the attendees attracted to the show were likely more sophisticated and involved in the extreme action vehicle space than an average consumer. Thus, it is more likely than not that persons ordinarily skilled and interested in POV action cameras were in attendance or at least knew about the trade show and expected to find action sports cameras at the show. While the Board found that GoPro did not provide any evidence as to what products the companies at the trade show make, GoPro was not the only manufacturer of POV action cameras. The vendor list provided with Mr. Jones’s declaration listed a number of vendors who likely sell, produce and/or have a professional interest in digital video cameras.”
In a previous blog post, we reported that in a final written decision on October 26, 2016, the PTAB concluded that GoPro, Inc. (GoPro) failed to demonstrate that the challenged claims in a patent owned by Contour IP Holding LLC (Contour) were unpatentable. IPR (IPR2015-01080; “the GoPro IPR”) GoPro asserted that the challenged claims were unpatentable in view of, among other references, a GoPro product catalog that included information for a digital video camera.
GoPro submitted evidence to support its assertion that the product catalog was disseminated at an action sports trade show and otherwise available to over one thousand attendees. But the PTAB concluded that GoPro failed to provide evidence that the trade 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 product catalog there. The PTAB also found that GoPro failed to provide evidence that the product catalog was disseminated or otherwise made available at the trade show to persons ordinarily skilled in the art.
On appeal, the Federal Circuit vacated the PTAB decision. Setting the tone for the Federal Circuit’s opinion that the PTAB’s interpretation of case law regarding accessibility was too narrow, the court noted that relatively obscure documents may qualify as prior art so long as the relevant public has a means of accessing them:
For example, we have determined that a single cataloged thesis in a university library was “sufficient[ly] accessible to those interested in the art exercising reasonable diligence.” Subsequently, we 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.” Accordingly, “[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.’”
Slip Op. at 6 (citations omitted). The Court noted that the expertise of the target audience is only one factor when considering accessibility and that case law directs the inquiry to also consider the nature of the conference, whether there are restrictions on public disclosure of the information, expectations of confidentiality, and expectations of sharing the information. Looking at these factors in relation to the trade show at which the GoPro catalog was available, the Court stated:
Trade shows are not unlike conferences—a trade show is directed to individuals interested in the commercial and developmental aspects of products. If one desires to examine certain new products on the market, attending a trade show involving identical or similar products is a good option…..The fact that the dealer show is focused on action sports vehicles is not preclusive of persons ordinarily skilled in the art from attending to see what POV digital cameras were being advertised and displayed…. Although the trade show was only open to dealers, there is no evidence or indication that any of the material disseminated or the products at the show excluded POV action cameras, or information related to such cameras. Contrary to the Board’s conclusion, the attendees attracted to the show were likely more sophisticated and involved in the extreme action vehicle space than an average consumer. Thus, it is more likely than not that persons ordinarily skilled and interested in POV action cameras were in attendance or at least knew about the trade show and expected to find action sports cameras at the show.
Id. at 8–10. Concluding that GoPro met its burden to show that its catalog is a printed publication under § 102(b), the Court noted that although the general public at large may not have been aware of the trade show, dealers of digital action cameras would encompass the relevant audience such that a person ordinarily skilled and interested in digital action cameras, exercising reasonable diligence, should have been aware of the show. The Court finally noted that the GoPro Catalog was disseminated without restrictions and was intended to reach the general public.
This opinion follows on the heels of another Federal Circuit opinion that vacated a PTAB decision that focused on the audience at a conference. We wrote about that decision here, and, as above, the Court concluded that the PTAB erroneously focused on one aspect of the conference.
These recent decisions emphasize that, not unlike a single copy of a research thesis tucked away in a university library, materials made available at a trade show or conference, albeit obscure and not publically advertised, may qualify as prior art. To rely on such materials, petitioners should consider the expertise of the audience, size and nature of the conference, whether the conference is open to people interested in the subject matter of the material disclosed, whether there is an expectation of confidentiality, and the purpose of the conference.