Trade show catalog found to be a printed publication

In GoPro vs. Contour, the CAFC issued a revised opinion following a petition for rehearing:


OPINION ISSUED: July 27, 2018
OPINION MODIFIED: November 1, 2018



with the following overview:


GoPro, Inc. appeals from final written decisions of the
Patent Trial and Appeal Board in two inter partes review
proceedings. In the proceedings, the Board found that the
petitioner, GoPro, did not demonstrate that the challenged
claims are unpatentable as obvious. The Board
based this decision on its conclusion that a certain GoPro
catalog is not a prior art printed publication. We disagree.
We vacate and remand for further proceedings
consistent with this opinion.



Of printed publication


Whether a reference constitutes a printed publication
under 35 U.S.C. § 102(b)3 is a legal conclusion based on
underlying factual determinations. See In re Lister, 583
F.3d 1307, 1311 (Fed. Cir. 2009). The issue of whether a
reference represents a printed publication is a question of
law that is reviewed de novo. See In re Klopfenstein, 380
F.3d 1345, 1347 (Fed. Cir. 2004). The Board’s findings of
fact, such as public accessibility, are reviewed for substantial
evidence. 5 U.S.C. § 706(2)(E).
Section 102(b) provides that a person shall be entitled
to a patent unless the invention was described in a printed
publication more than one year prior to the date of
application for patent in the United States. The printed
publication rule is based on the principle that once an
invention is in the public domain, it can no longer be
patented by anyone. Blue Calypso, LLC v. Groupon, Inc.,
815 F.3d 1331, 1348 (Fed. Cir. 2016).
We have interpreted § 102 broadly, finding that even
relatively obscure documents qualify as prior art so long
as the relevant public has a means of accessing them.
See, e.g., Jazz Pharm., Inc. v. Amneal Pharm., LLC, Nos.
17-1671, -1673, -1674, -1675, -1676, -1677, -2075, --- F.3d
----, slip op. at 11–22, 2018 WL 3400764, at *5–9 (Fed. Cir.
July 13, 2018). 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.” In re Hall, 781 F.2d 897, 900
(Fed. Cir. 1986). 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.” Constant
v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569
(Fed. Cir. 1988). 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.’” Blue
Calypso, 815 F.3d at 1348



The Board's thoughts:


The Board found all the evidence presented by GoPro
credible,4 but explained that GoPro did not provide evidence
that the 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. The Board relied on the evidence presented by Contour,
which consisted of statements about the dealer show
being open exclusively to dealers and not the general
public. See J.A. 422–23. Specifically, the Board found
that a person ordinarily skilled in the art would not be
interested in the dealer show because it was not an academic
conference or camera industry conference, but
rather a dealer show for action sports vehicles like motorcycles,
motorbikes, ATVs, snowmobiles, and watercraft.
See ’694 FWD, at 26–27.



The CAFC noted:


We disagree with the Board’s conclusion that the evidence
presented by GoPro failed to satisfy the § 102(b)
requirements. The case law regarding accessibility is not
as narrow as the Board interprets it. The Board focused
on only one of several factors that are relevant to determining
public accessibility in the context of materials
distributed at conferences or meetings. The Board cited
no cases where we have strictly held that the expertise of
the target audience is dispositive of the inquiry of accessibility.
Cf. Medtronic v. Barry, 891 F.3d 1368, 1382 (Fed.
Cir. 2018) (“The expertise of the target audience can be a
factor in determining public accessibility. But this factor
alone is not dispositive of the inquiry.” (citations omitted)).
Rather, our case law directs us to also consider the
nature of the conference or meeting; whether there are
restrictions on public disclosure of the information; expectations
of confidentiality; and expectations of sharing the
information. Id. at 1382–83. 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.
Trade shows are not unlike conferences—a trade show
is directed to individuals interested in the commercial and
developmental aspects of products.

(...)

The Board concluded that the GoPro Catalog was not
a printed publication because the Tucker Rocky Dealer
Show was not open to the general public7 and GoPro
failed to provide evidence that someone ordinarily skilled
in the art actually attended the dealer show. But, the
standard for public accessibility is one of “reasonable
diligence,” Blue Calypso, 815 F.3d at 1348, to locate the
information by “interested members of the relevant public.”
Constant, 848 F.2d at 1569 (emphasis added). Mr.
Jones testified that the dealer show was attended by
actual and potential dealers, retailers, and customers of
POV video cameras. Additionally, the GoPro Catalog was
disseminated with no restrictions and was intended to
reach the general public. Based upon Mr. Jones’s testimony,
the evidence provided by GoPro regarding the
Tucker Rocky Dealer Show, and the evidence of the Tucker
Rocky Distributing website, we conclude that GoPro
met its burden to show that its catalog is a printed publication
under § 102(b).



Note also the Order including text:



(2) The previous precedential opinion in this appeal,
issued July 27, 2018, is withdrawn and replaced
with the modified precedential opinion accompanying
this order.