Printed Publications and Persons of Ordinary Skill: Did the PTAB in GoPro v. Contour IP Holding Apply an Overly Restrictive Standard?

• Author: Joel D. Sayres and Doowon Chung
• Position: The GoPro v. Contour PTAB Decision In GoPro v. Contour, GoPro filed two IPR petitions contending that the claims of US Patent Nos. 8,890,954 and 8,896,694 were unpatentable in view of a 'GoPro catalog,'
• Pages: 16-60

Published in Landslide® magazine, Volume 10, Number 2 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This

information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Printed Publications

and Persons of

Ordinary Skill

by Joel D. Sayres and Doowon R. Chung

Did the PTAB in GoPro

v. Contour IP Holding

Apply an Overly

Restrictive Standard?

An inventor is not entitled to a patent if his or her

invention was already described in a “printed pub-

lication” before the effective ling date.1 This

concept seems simple enough. However, the ques-

tion of what constitutes a “printed publication”

can be tricky. What sort of references are con-

sidered printed publication? What level of pub-

lic dissemination or accessibility is required? Is it

necessary that the public at large can access a reference for it to

constitute invalidating prior art, or is it sufcient that only certain

members of the public have such access? Is it necessary that such

members of the public view, understand, and retain the teachings

of the reference? Do product catalogs distributed by a company to

potential customers or resellers at a trade show qualify?

An appeal of a Patent Trial and Appeal Board (PTAB) deci-

sion that gets to the heart of these issues is currently pending

before the Federal Circuit, although the case itself has received

surprisingly little attention. In GoPro, Inc. v. Contour IP Hold-

ing LLC, the PTAB concluded that a product catalog offered by

an inter partes review petitioner did not constitute a “printed

publication” under pre-AIA 35 U.S.C. §102(b), even though

the petitioner submitted evidence that the catalog was dis-

tributed to hundreds of attendees at a trade show, without any

restriction on dissemination.2 The PTAB determined that even

if the attendees at the trade show were members of the public

interested in buying petitioner’s products, this was insufcient

because the petitioner did not offer evidence that the attendees

included “persons ordinarily skilled in the art,” as specically

dened in the proceeding.3 Because both grounds of unpatent-

ability offered by the petitioner relied on the catalog, the PTAB

concluded that the petitioner could not demonstrate that any of

the challenged claims were unpatentable.4

At rst blush, this may not seem like a remarkable decision.

Indeed, the PTAB based its conclusion on the language set forth

in numerous Federal Circuit decisions—language that appears to

require a showing that a putative prior art reference was accessible

to “persons ordinarily skilled in the subject matter or art” before it

will be considered a “printed publication” under §102. However, a

closer look at the intent and judicial interpretation of the “printed

publication bar” suggests that the PTAB may have adopted an

overly rigid standard for showing “public accessibility” that is

in tension with the statute’s underlying purpose. The decision, if

afrmed by the Federal Circuit, may have considerable conse-

quences for patent challengers relying on prior publications for

invalidity, and may lead to patents surviving review even though

they recite inventions that were already in the public domain.

The GoPro v. Contour PTAB Decision

In GoPro v. Contour, GoPro led two IPR petitions con-

tending that the claims of US Patent Nos. 8,890,954 and

8,896,694 were unpatentable in view of a “GoPro catalog,”

Joel D. Sayres is a partner at Faegre Baker Daniels in Denver, Colorado.

He specializes in patent litigation and proceedings before the Patent Trial

and Appeal Board. He can be reached at joel.sayres@faegrebd.com.

Doowon R. Chung is an associate at Faegre Baker Daniels in

Minneapolis, Minnesota, where he specializes in intellectual property

litigation. He can be reached at doowon.chung@faegrebd.com.

Image: iStockPhoto

Published in Landslide® magazine, Volume 10, Number 2 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This

information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

along with other references.5 The GoPro catalog included

information relating to a digital video camera attached to a

motor helmet.6 GoPro submitted an employee’s declaration

attesting that the GoPro catalog was distributed to potential

customers at the 2009 Tucker Rocky Dealer Show—a trade

show directed at dealer and vendor members in the motor-

cycle and other action sports vehicles industry.7 GoPro’s

employee testied that the trade show had over 1,000 attend-

ees and that hundreds of copies of the GoPro catalog were

distributed without restriction to attendees.8

In its nal written decision, the PTAB held that the GoPro

catalog was not a printed publication and thus not prior art to

the challenged patents.9 Relying on the language from several

Federal Circuit decisions, the PTAB concluded that a refer-

ence is considered “publicly accessible” and therefore a prior

art printed publication under §102 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.”10 The PTAB determined

that the GoPro catalog did not meet this standard. First, the

PTAB concluded that the petitioner provided “no evidence

that the 2009 Tucker Rocky Dealer 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 GoPro

Catalog there.”11 Second, the PTAB held that there was “no

evidence that the GoPro Catalog was disseminated or other-

wise made available at the 2009 Tucker Rocky Dealer Show

to persons ordinarily skilled in the art.”12 In this regard, the

PTAB noted that the petitioner did not provide any evidence

that persons ordinarily skilled in the art, as dened by the

PTAB, would have been in attendance at the trade show.13

GoPro led a request for rehearing in which it argued that

the PTAB had misapprehended the printed publication case

law by requiring GoPro to show accessibility specically

by persons ordinarily skilled in the art.14 The PTAB rejected

GoPro’s motion for reconsideration, reafrming “that the

appropriate standard is that set forth in Blue Calypso.”15

Is the Standard Too Rigid for Determining Whether a

Reference Is a “Printed Publication”?

Courts Focus on “Public Accessibility” as the Key Inquiry

Section 102 of the Patent Act precludes inventors from get-

ting a patent on an invention already described in a “printed

publication” before the effective ling date of the claimed

invention.16 Ultimately, Congress intended to make sure that

the benets of a patent would only go to an inventor if the pub-

lic were getting adequate consideration in return—and there

could be no consideration if the invention was already in the

public’s possession.17 In other words, “in consideration for

the patent grant, something must be given to the public which

it did not have before.”18 Thus, the printed publication bar of

§102 “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.”19 The bar “operates upon the theory

that the invention in controversy is in the public domain, and

once there, is no longer patentable by anyone.”20

But what does it mean for an invention to be “in the pos-

session of the public,” or “in the public domain”? Courts have

grappled with this question, and, based on the intent of the

printed publication bar, have come to a rather unied answer:

“[T]he key inquiry is whether or not a reference has been

made ‘publicly accessible.’”21 Indeed, “throughout [Federal

Circuit] case law, public accessibility has been the criterion

by which a prior art reference will be judged for the pur-

poses of § 102(b).”22 “This follows logically from the theory

that the patent grant is in the nature of a contract between the

inventor and the public. Hence, if knowledge of the invention

is already accessible to the public there is a failure of consid-

eration and no patent may be granted.”23 While certain early

cases treated “printed” and “publication” as separate con-

cepts, with the former directed to concepts of “probability of

dissemination” and the latter to “public accessibility,”24 later

cases made clear that the statutory term “printed publication”

was a unitary concept focused on public accessibility,25 and

factors like extent of dissemination and indexing in a library

were best viewed as “proxies for public accessibility.”26

Accessibility to a Subset of the Public Interested in the Art

Has Been Held Sufcient

The judicial consensus that “public accessibility” is the key

inquiry informing whether a reference is in the public domain

still leaves open an important question: What, exactly, consti-

tutes public accessibility? How accessible to the public must

a reference be before it qualies as a printed publication? If

an academic reference is tucked away in an obscure techni-

cal library, or a manual for a unique and little-known product

is available only from the product manufacturer, does this

qualify? In both cases, the reference is technically accessi-

ble to the public—anyone can obtain a copy by going to the

library or contacting the manufacturer. But surely most of the

public would not know how to obtain the reference, as they

would not be familiar with the technology or product at issue,

and thus would not know where to look. Under these circum-

stances, are those references truly “accessible” to the public?

In other words, if the reference is, practically speaking, only

“accessible” to part of the public, does this still qualify as

being in the public domain?

This question was confronted squarely by the predeces-

sor to the Federal Circuit in In re Bayer.27 In Bayer, the Court

of Customs and Patent Appeals was faced with the ques-

tion of whether a copy of a patent applicant’s graduate thesis,

which was deposited at the University of Toledo Library and

available to members of the applicant’s graduate committee,

but not cataloged or shelved as of the relevant date, consti-

tuted a “printed publication” and thus invalidating prior art.28

The court framed the issue as “a question of degree, namely,

what degree of public accessibility is required for a printed

document to qualify as a publication under the statute.”29

Specically, the court weighed the applicant’s position that

“accessibility to the general public is required” against the

Board of Patent Appeals and Interferences’ (BPAI) position

that “accessibility to any part of the public will sufce.”30

After considering various case law and scholarly commen-

tary, the court concluded that “a printed document may