In a recent decision arising from an Inter Partes Review ("IPR") challenge to an issued patent, Weber, Inc. v. Provisur Techs., 2024 U.S. App. LEXIS 2905 (Feb. 8, 2024), the Federal Circuit discussed how much evidence – or how little – is needed to prove "publication" of a piece of prior art, where the allegedly published item is distributed to a limited number of recipients and with restrictions on republishing. Although not discussed by the court, the decision is also of interest for highlighting the tension between the test for printed publication and the intent that IPR be a streamlined procedure in comparison to litigation.
Background: an IPR can be initiated by a person petitioning the Patent and Trademark Appeal Board ("PTAB") of the U.S. Patent & Trademark Office ("PTO") to cancel an issued patent, on the ground that the patent was not validly granted by the PTO. The petition may challenge validity of the patent either on the basis that (i) a single piece of prior art ("prior art" meaning prior technology in the relevant field) describes the invention claimed in the patent, or (ii) the prior art as a whole renders the claimed invention "obvious."
IPR is an administrative procedure, and it is meant to be a speedier alternative to filing a declaratory judgment action in court. A "trial" in an IPR consists of oral argument by the attorneys based on evidence filed with the PTAB. Importantly, for the sake of the IPR procedure being "streamlined," the categories of prior art that can be relied on in a petition for IPR are narrower than in civil litigation: "Congress sought to create a streamlined administrative proceeding that avoided some of the more challenging types of prior art . . . such as commercial sales and public uses, by restricting the 'prior art' which may form a basis of a ground [of invalidity] to prior art documents." Qualcomm, Inc. v. Apple, Inc., 24 F.4th 1367, 1376 (Fed. Cir. 2022) (emphasis added). Thus, validity can be challenged "only on the basis of … patents or printed publications." 35 U.S.C. § 311(b).
The distinction set forth in Section 311(b) embodies a view that documents, in contrast to physical samples of products allegedly on sale or use, will require little or no evidentiary foundation and testimony to show that they are prior art. That view is sound as far as such widely-available items as patent applications (required to be published a certain amount of time after filing (within 18 months in the United States)); articles in industry journals; or textbooks. But what about harder-to-locate items – such as technical reports in an online database, or copies of a PowerPoint accompanying an oral presentation at a conference – are they "publications"? The answer is, it depends: "the touchstone of whether a reference constitutes a printed publication is public accessibility," meaning "whether interested members of the relevant public could locate the reference by reasonable diligence." Weber, 2024 U.S. App. LEXIS 2905, at 9.
Certain consequences follow from "public accessibility" being the key, one of which is that the courts long ago stopped giving independent meaning to the statutory term "printed." A manuscript or drawing done by hand, or an electronic file, is not excluded from consideration as a "printed" publication. In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981) (the word "printed" is now "somewhat redundant" in light of modern means of "document duplication, data, storage, and data-retrieval systems"). Nor is it necessary to prove that anyone has actually read the work, if it is deemed accessible. A doctoral thesis gathering dust in a university library is a printed publication if accessible, e.g., suitably indexed and catalogued. In re Hall, 781 F.2d 897, 899-900 (Fed. Cir. 1986).
In Weber, the issue was the public accessibility of operating manuals of the petitioner (Weber, Inc.) for commercial food slicing products, which Weber wanted to cite as prior art in an IPR challenge to patents for "high-speed mechanical slicers used in food-processing plants to slice and package food articles, such as meats and cheeses." 2024 U.S. App. LEXIS 2905, at 2. The evidence showed that the manuals may have been distributed to as few as ten customers. Id. at 10 n.5. The manuals also contained a copyright notice, and they were subject to alleged confidentiality restrictions in Weber's "terms and conditions" for customers. Id. at 6-7.
The PTAB excluded the manuals from evidence, but the Federal Circuit reversed. The parties disputed whether ten customers or "over forty" received the manuals, but the court deemed the exact number immaterial, since "[n]o minimum number of occasions of access is dispositive of the public accessibility inquiry." Id. at 10 n.5. Further, "the printed-publication inquiry [focuses] on the interested public, not the general public." Id. at 11 n.6. In addition, the court concluded that the Board put "inordinate emphasis on alleged confidentiality restrictions associated with the operating manuals." Id. at 12. The copyright notice on the manual, and an "intellectual property rights" clause in Weber's terms and conditions for customers, did not "negate" Weber's "ability to make the reference publicly accessible." Id. at 13. By Weber's "general practice," customers received a manual with the purchase of a slicer, and the manuals were also made available at trade shows and in factory showrooms. Id. at 11. This evidence was enough to show accessibility.
In my view, there are three main takeaways from Weber: first, the concept of "interested public" carries considerable weight. It is implied in Weber that the 10 to 40 customers for the Weber commercial food slicer essentially constituted the bulk of the interested public for this technology (see id. at 11 n.6 ("Here, the interested public includes commercial entities that can afford high-cost slicers.")), and the manuals having been made available to that constituency meant they had been published. Thus, any copying restrictions imposed on recipients were not determinative of accessibility.
Second, there is a difference between accessibility and subsequent findability. The publication process cannot be reversed: "once an invention is in the public domain, it is no longer patentable by anyone." Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016). "We have stated that a printed publication 'need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.'" Medtronic, Inc. v. Barry, 891 F.3d 1368, 1381 (Fed. Cir. 2018). In Medtronic, the court ruled that the PTAB should have considered whether videos and slides distributed via CD and binders at three industry meetings attended by, at most, 55 spinal surgeons (of whom, however, some were "supremely skilled experts in [their] technical field" (id. at 1382)), qualified as printed publications. Id. Even though there was no evidence that the materials "were stored somewhere for public access after the conference," the PTAB needed to consider "whether such materials were sufficiently disseminated" during the conferences. Id. at 1381. In Weber, the court likewise gave weight to displays at trade shows without concern for whether someone in the field could find out at a later date what was displayed.
Third, somewhat at odds with the goals of keeping IPR a "streamlined" process and avoiding "the more challenging types of prior art," Qualcomm, 24 F.4th at 1376, the test for printed publication is heavily factual. It "involves a case-by-case inquiry into the facts and circumstances surrounding the reference's disclosure to members of the public." In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). In Medtronic, for example, analysis of the status of the disclosures made during meetings required inquiry into "[t]he nature of those meetings … expectations of confidentiality" and "[t]he expertise of the target audience." Medtronic, 891 F.3d at 1382-83. The court in Weber looked at such evidence as "employees' declarations … delivery notes, invoices, price lists … and email exchanges between Weber employees and customers." 2024 U.S. App. LEXIS 2905 at 11. The purpose of restricting the types of prior art citable in an IPR to patents and publications was, apparently, to limit the PTAB's analysis as much as possible to pondering the interpretation of printed words. Yet, Weber shows that the test for "printed publication" will in some instances require the PTAB to act as a jury, making detailed factual (and credibility) determinations based on business records and witness testimony, rendering the IPR process perhaps more litigation-like than envisioned when Congress created the statutory framework for IPR.
