Mcle Self-study Article

• Citation: Vol. 43 No. 2
• Publication year: 2018
• Author: Jason S. Angell

MCLE Self-Study Article

Jason S. Angell
Freitas Angell & Weinberg LLP

Kayla A. Odo
Freitas Angell & Weinberg LLP

"PUBLIC ACCESSIBILITY" OF "PRINTED PUBLICATION" PRIOR ART: AN OBJECTIVE STANDARD

(See end of this article for information on receiving 1.0 hour MCLE self-study credit.)

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Introduction

A patent claim will be invalid if the claimed invention was, among other things, "patented, [or] described in a printed publication.. .before the effective filing date of the claimed invention." While prior art patents generally are straightforward, the question of whether a reference qualifies as a "printed publication" prior art must be established by proof. The emergence of the Patent Trial and Appeal Board ("PTAB" or "Board") as a preferred venue in recent years for invalidity challenges has provided a forum for a flurry of arguments aimed at establishing that documents housed in obscure libraries, disclosed at industry meetings, academic conferences, trade shows and other gatherings, or published in remote corners of the web, qualify as "printed publication" prior art. This article examines early and recent "printed publication" case law, and provides practical suggestions for litigating in this increasingly active area.

Determining whether alleged prior art qualifies as a "printed publication" requires an analysis, from an objective perspective, of whether the public interested and ordinarily skilled in the art would be able to locate it with reasonable diligence. It is not sufficient to show that a particular person or group was subjectively aware of or exposed to an item of prior art. The proper focus on objective circumstances is essential to successfully offering or challenging "printed publication" prior art.

Foundational Principles

Under 35 U.S.C. § 102, "[a] person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention[.]"¹

Most recently, in Blue Calypso, LLC v. Groupon, Inc., the Federal Circuit reaffirmed the long-standing rule that in order to qualify as a prior art printed publication, a reference "must have been sufficiently accessible to the public interested in the art."² "'Because there are many ways in which a reference may be disseminated to the interested public, 'public accessibility' has been called the touchstone in determining whether a reference constitutes a 'printed publication' bar under 35 U.S.C. § 102(b).'"³ Thus, for a reference to be considered sufficiently "publicly accessible" at the relevant time, it must have been "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."⁴

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This standard traces back through prior cases from the Federal Circuit⁵ and one of its predecessor courts⁶ to I.C.E. Corporation v. Armco Steel Corporation, a 1966 case from the Southern District of New York.⁷ In I.C.E. Corporation, the proposed reference was a German patent application reproduced upon microfilm and stored in the Library of Congress.⁸ The Southern District of New York noted that although the term "printed publication" first appeared in the Patent Act of 1836, no uniform standard existed for evaluating whether a reference qualified as a "printed publication." Despite the absence of guidance, the court reasoned that section 102 contemplates "public" knowledge or use.⁹ "By judicial construction, the word 'public' in this context has been construed to mean 'not secret.'"¹⁰ The court then distilled from the case law its own formulation of "printed publication" under the Patent Act:

After reviewing the cases in this area, it might be said that the term "printed publication" as contemplated by Congress in 35 U.S.C. 102 can include a document printed, reproduced or duplicated by modern day methods, including microfilming, upon a satisfactory showing that such document has been 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 and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.¹¹

The Court of Customs and Patent Appeals later relied on this formulation and added that "the question to be examined under s[ection] 102(b) is the accessibility to at least the pertinent part of the public, of a perceptible description of the invention, in whatever form it may have been recorded."¹² Access to "the pertinent part of the public" was important because "the printed publication provision was designed to prevent withdrawal by an inventor, as the subject matter of a patent, of that which was already in the possession of the public."¹³ Factors such as "intent to make public, activity in disseminating information, production of a certain number of copies, and production by a method allowing production of a large number of copies" aid in determining whether an item qualifies as a printed publication, although these considerations are not always conclusive or required.¹⁴ "Each case must be decided on the basis of its own facts."¹⁵ Thus, for a given reference, "sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents" should be produced.¹⁶ Subsequent cases address various factual scenarios that bear on whether a reference is sufficiently accessible to the interested public to qualify as a "printed publication." ¹⁷

A central feature that emerges from the seminal cases is that the "public accessibility" standard is objective. The Blue Calypso court made clear that "public accessibility" requires that a given reference be available to "the interested public," and that the reference be "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." Importantly, Blue Calypso makes clear that it is not sufficient that some portion of the relevant public may have had access to a reference at a particular time. A reference is not "publicly accessible" merely because some members of the public may have had access to a particular reference, such as through private group meetings. Rather, the key consideration is whether "the public" interested and ordinarily skilled in the art could have located the reference exercising reasonable diligence. This understanding of the standard as an objective one is borne out in the cases addressing "public accessibility."

Application of the "Public Accessibility" Requirement

The factual contexts of cases addressing the relevant level of "public accessibility" vary widely. In some circumstances, references offered as prior art had been virtually buried in academic libraries, or distributed in a limited manner at invite-only trade shows, or had been subject to limited distribution and express or implied confidentiality obligations. Each of these different scenarios involves variations on the "touchstone" question of "public accessibility." The variability of the circumstances highlights why the inquiry is not amenable to a checklist of factors, and why each case must be carefully evaluated on its own.

References in Libraries

One of the most common circumstances in which questions of "public accessibility" arise is when a reference retrieved from an academic or industry library is offered as prior art. In these contexts, the "public accessibility" question typically turns on whether the publication was sufficiently indexed such that a person having ordinary skill in the art could locate the publication with reasonable diligence. As Judge Learned Hand said, "[w]hile it is true that the phrase, 'printed publication,' presupposes enough currency to make the work part of the possessions of the art, it demands no more. A single copy in a library, though more permanent, is far less fitted to inform the craft than a catalogue freely circulated, however ephemeral its existence; for the catalogue goes direct to those whose interests make them likely to observe and remember whatever it may contain that is new and useful."¹⁸

In In re Hall, the Federal Circuit outlined considerations for determining when a reference is sufficiently indexed at a library such that it is publicly accessible. The reference in In re Hall was a doctoral thesis received by the Library of the Freiburg University in Germany.¹⁹The appellant argued that the thesis was not shown to be accessible because the affidavit from the library's director and manager of the loan department "did not chronicle the procedures for receiving and processing a thesis in the library."²⁰ The appellant sought a requirement that evidence of a specific date of cataloging and shelving be presented.²¹ The court disagreed, concluding that "competent evidence of the general library practice may be relied upon to establish an approximate time when a thesis became available."²² The affidavit submitted met this standard.²³

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The court reached a different result in In re Cronyn. The court held the three student theses at issue not to be accessible to the public because "they had not been either catalogued or indexed in a meaningful way."²⁴ The theses were held at the main Reed College library and the library of the particular department in which the thesis work was performed, but were not generally indexed, cataloged, or assigned Library of Congress catalog numbers.²⁵ The evidence demonstrated that the theses were listed on individual cards including the student's name and title of the thesis, and the cards were sorted by the author's name.²⁶ "Although the titles of the theses were listed on 3 out...