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§102(b) Printed Publication: Unrestricted Distribution at a Trade Show

The U.S. Court of Appeals for the Federal Circuit opinion issued on November 1, 2018 clarifies the standard for a document to qualify as a “printed publication” under pre-AIA 35 U.S.C. §102(b) and reversed an earlier Patent Trial and Appeal Board (“PTAB”) decision.1 Specifically, the requirement that a reference be “publicly available” is not as narrow as the PTAB had interpreted. The Court held that “the standard for public accessibility [of an alleged prior art reference] is one of reasonable diligence, to locate the information by interested members of the relevant public.”

The petitioner at the PTAB, GoPro, appealed two final written decisions by the PTAB which ruled that GoPro failed to provide evidence that a GoPro catalog qualified as a printed publication under pre-AIA §102(b). This catalog was GoPro’s primary invalidity reference in the underlying inter partes review proceedings. To meet its burden as petitioner, GoPro relied on an unrebutted declaration of a GoPro employee claiming that he attended an annual action sports vehicle dealer trade show prior to the critical date of the challenged patents. The trade show was attended by thousands of attendees and the declarant alleged that he (1) displayed the GoPro catalog at a booth purchased by GoPro; and (2) distributed hundreds of GoPro catalogs to attendees without restriction.

Contour, the patent owner, argued that the trade show was only for wholesale distributors and not the general public. Contour further argued that a skilled artisan from the public in the sports video camera field—the subject matter of the challenged patents—would not have known about or attended a show in a different field of art: action sports vehicles. After initially instituting the IPRs based on the GoPro catalog being a §102(b) printed publication, the PTAB agreed with Contour and found that the GoPro catalog was not a printed publication because (1) the trade show was not open to the general public, and (2) GoPro failed to provide evidence that someone ordinarily skilled in the art actually attended the trade show.

The Court reversed the PTAB and held that the record evidence compelled the conclusion that the GoPro catalog is a printed publication under §102(b) as a matter of law. First, the Court explained that the standard for public accessibility is “reasonable diligence to locate the information by interested members of the relevant public” and “direct availability to an ordinary skilled artisan is no longer viewed as dispositive.” The Court emphasized that although the trade show was not publicly accessible, it was attended by thousands of dealers, retailers, and customers of sports video cameras (which are an accessory to action sports vehicles and thus relevant to those attending the trade show). Further, the Court noted that the GoPro catalog was disseminated with no restrictions and was intended to reach the general public.

This case provides patent owners, accused infringers, and practitioners some welcome guidance regarding the standard for public accessibility. In particular, if a document is actively distributed at a relevant trade show without restriction, even if that trade show was not open to the public, it qualifies as a printed publication under §102(b) and can be used to invalidate a patent.

1 GoPro, Inc. v. Contour IP Holding LLC, 898 F.3d 1170 (Fed. Cir. 2018).

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About this Author

 Andrew H. DeVoogd Member Boston Mintz Patent Litigation Licensing & Technology Transactions International Trade Commission Strategic IP Monetization & Licensing Federal District Court IP Due Diligence

Drew is an experienced patent litigator and trial attorney whose work encompasses a broad range of technologies. He regularly represents clients in high stakes International Trade Commission investigations involving some of the world's largest technology companies. He also litigates patent matters and other business disputes in federal district courts around the country, and advises clients in complex IP licensing and related transactions. Drew excels at helping clients make sense of nuanced legal issues while developing effective strategies to protect and leverage their intellectual...

Serge Subach, Mintz Levin Law Firm, Boston, Intellectual Property Attorney

Serge’s intellectual property practice focuses on patent litigation. His experience spans broad technical fields including software, consumer electronics, and medical devices.

Before joining Mintz Levin, Serge worked for TomTom, Inc., where he interfaced between product management and engineering departments in coordinating beta testing of both software and hardware products.

During law school, Serge served as President of the Intellectual Property Law Association and as Managing Business Editor of the New England Journal on Criminal Civil Confinement.