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Patent Prosecutors Beware –Catalog Distributed to "Members Only" is Indeed a Printed Publication

A catalog distributed at a members-only trade show was found to be a printed publication under 35 USC § 102(b).1 The Federal Circuit vacated and remanded a Board decision finding that an IPR challenger's catalog distributed at a trade show was not sufficiently available to the general public to qualify as a printed publication. The Federal Circuit found that the Board failed to cite any cases where the Federal Circuit has "strictly held that the expertise of the target audience is dispositive of the inquiry of accessibility."2

An employee of GoPro operated a demonstration booth at a tradeshow and distributed a catalog that GoPro used to challenge Contour's patents in an IPR. Contour successfully persuaded the Board that the catalog was not prior art, arguing that the catalog was distributed at a tradeshow, which was open only to dealers and not the general public. The Board stated that GoPro had not met its burden to show that the catalog was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art and exercising reasonable diligence could have located it.3

In vacating and remanding the Board's decision, the Federal Circuit stated that 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. Other factors to be considered are the nature of the meeting; whether restrictions are placed on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.4

The Federal Circuit also noted that the standard for public accessibility "is one of reasonable diligence to locate the information by interested members of the public."5 While acknowledging that the general public at large may not have been aware of the trade show, the relevant audience was aware of the show.6 Additionally, the catalog was disseminated with no restrictions and was intended to reach the general public.7

Patent prosecutors, if not already doing so, would be wise to advise their clients that limited distribution of marketing materials to a relevant audience could be considered prior art. Such materials should be considered for citation to the USPTO during prosecution.

1 GoPro, Inc., v. Contour IP Holding LLC, Appeal Nos. 2017-1894, 2017-1936 (Fed. Cir., July 27, 2018)
2 Id. at pages 7-8.
3 Id.
4 Id. at pages 8
5 Id. at page 10 (internal citations omitted).
6 Id. at pages 10-11.
7Id. at page 11.

See the Opinion here.