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Federal Circuit Upholds PTAB Ruling that Tradeshow Catalog is a Printed Publication

Despite previously affirming the ITC's decision that a dental tradeshow catalog was not publicly accessible, the Federal Circuit recently upheld the PTAB's opposite conclusion.1 The Federal Circuit explained that it was not bound by its prior affirmance of the ITC's judgment because it was based on a different factual record with a different burden of proof, i.e., preponderance of the evidence at the PTAB versus clear and convincing evidence at the ITC. 2

The PTAB considered evidence of public accessibility that was previously presented to the ITC in addition to new evidence. Such new evidence included declarations and deposition testimony of the owners of a dental supply distributor, Hantman and Chakir. Chakir attended the meeting and Hantman requested that Chakir collect catalogs from competitors at the conference. Further, the Board found that the catalog in Hantman's possession and the catalog offered by the patent challenger had identical pages.

Moreover, the catalog's "March 2003," imprint on its cover, while not dispositive of the date of public accessibility, was relevant evidence that supported the Board's finding.3

In reaching its decision, the Federal Circuit indicated that the patent owner pointed to no evidence that the catalog was distributed with an expectation that it would be kept confidential or not disseminated. In addition, the catalog contained no designations, such as "draft" or "confidential," that might suggest that it was not intended for public distribution.4

As indicated in our previous post, http://www.ipnewswire.blog/blog/2018/8/21/patent-prosecutors-beware-catalog-distributed-to-members-only-is-indeed-a-printed-publication, patent prosecutors would be well advised to counsel their clients regarding even limited distribution of marketing or trade materials before the application filing date. It may also be wise for companies to routinely designate such materials as "confidential." While such a designation may not protect the catalog from prior art status in all circumstances, it may prove useful in an invalidity defense.

1 Nobel Biocare Services AG v. Instradent USA, Inc., Appeal No. 2017-2256 (Fed. Cir., 2018)
2 Id. at page 13.
3 Id. at page 14.
4 Id. at page 16-17.

See the Opinion here.