Saturday, April 24, 2021

Thinking about In re Hall, 781 F.2d 897 (CAFC 1986)

On the matter of printed publications, patent law students get exposed to In re Hall early in their careers. A reference indexed in one library was deemed available and thus a printed publication for 102 purposes.
Casebriefs describes the facts:

Hall’s application for a patent was rejected because a doctoral thesis was available as a "œprinted publication" more than one year prior to the application’s effective date. Hall appealed, claiming that there was no evidence that the dissertation was indexed properly in the library catalog before the critical date and that, even if it were, the presence of a single catalogued thesis in one university library does not establish sufficient accessibility of the publication’s teachings to those interested in the art and who practice reasonable diligence.

Hall's argument was rejected.

Of details, “‘[P]ublic accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication . . . .’” In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “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.” Medtronic, 891 F.3d at 1380 (alteration in original) (internal quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the ‘facts and circumstances surrounding the reference’s disclosure to members of the public.’” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).

Let's change the facts a bit. There is information in a government document that is relevant to a patent application. The document was never published, in the sense that nothing has been presented to the public about its contents. HOWEVER, if a FOIA request is made (such cannot be too general), one MIGHT obtain the document, or perhaps information leading to obtaining the document.

Is the "hidden" document a "printed publication"? See also VidStream loses at CAFC: matters of "what is" prior art. In re Hall revisited.


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