Many of the early cases addressing whether a particular reference constituted a “printed publication” involved patents or patent applications. These cases also set the framework for determining whether non-patent references qualified as printed publications.
This is the second post in our series examining what constitutes a “printed publication.” Our first post provided an introduction and summary of the statutory basis for printed publications under 35 U.S.C. § 102. This post can be viewed here: What Constitutes a Printed Publication – Introduction and Statutory Basis – Part 1.
One of the earliest cases in this regard was Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926). In Milburn, the reference was a patent application that was filed before the patent in dispute was filed. The reference application was filed in January 1911 and issued in February 1912, while the patent in dispute was filed in March 1911 and issued in June 1912. The reference application disclosed, but did not claim what was claimed in the patent in dispute.
The Court held that “[w]here a patent application fully and adequately disclosed, but did not claim, the thing patented to a later applicant alleging a later date of invention, the later applicant was not the ‘first inventor’….” Id. at 399. Further, “a description that would bar a patent if printed in a periodical or in an issued patent is equally effective in an application.” Id. at 401. Milburn was later codified as 35 U.S.C. § 102(e).
These early cases also grappled with what type of medium was required for the document to be considered a printed publication. At that time, the term “printed publication” was associated with, for example, a printing press that could produce multiple copies of a document that could be readily disseminated to the interested public. This concept is articulated in In re Tenney, 254 F.2d 619 (CCPA 1958). In Tenney, the reference was a microfilm copy of the typewritten specification of a German patent application. The court considered whether the microfilm, which allegedly was made available to the public only by virtue of the publication of a bibliography, with no evidence that any copies of the microfilm had been made or seen by any member of the public, is a “printed publication” within the meaning of 35 U.S.C. § 102(b). Id. at 621.
The court held that the microfilm was not a “printed publication” and, more particularly, that microfilm is not “printed.” Id. at 622. According to the court, for a publication to be a bar to patentability, it must be “printed.” Id. at 625. The court also noted that the reference should not only be printed, but should be published, as well. Id. at 626 (noting that only a single printed copy must be proved to have been published to affect a bar to patentability). To this end, the court stated that “[w]hile microfilming furnishes a means of multiplying copies, there is no probability, from a mere showing that a microfilm copy of a disclosure has been produced, that the disclosure has achieved wide circulation and that, therefore, the public has knowledge of it.” Id. at 627 (emphasis in original).
Later cases, however, recognized that microfilm and other media could qualify as a printed publication. In I.C.E. Corp. v. Armco Steel Corp., 250 F. Supp. 738 (S.D.N.Y. 1966), the reference was a German patent application reproduced on microfilm stored in the Library of Congress. Following World War II, the U.S. Army microfilmed all patent applications found in the German Patent Office. Id. at 740 (including 180,000 patent applications from 1936 to 1945). Subsequently, the Office of Technical Services (“OTS”) in the Department of Commerce released to the public a brochure or pamphlet entitled, “German Patent Technology Available Through the Office of Technical Services.” The OTS Technical Bulletin described these applications and listed the microfilm reels on which they appear. Individual numbers were assigned to each patent application up to a certain date and then numbers were assigned to microfilm reels as a whole, but not to each separate application afterward. Id. The patent application in question could be found under this classification system. Id. at 743.
After a careful analysis of Tenney, the court stated that it could not hold as a matter of law that a microfilm was not a “printed publication.” In doing so, the court articulated that “the term ‘printed publication’ as contemplated by Congress in 35 U.S.C. 102 can include a document printed, reproduced or duplicated by modern day methods, including microfilming, upon a satisfactory showing that such document has been 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….” Id.
The rationale in I.C.E. Corp. was followed in Philips Electronic and Pharmaceutical Industries Corp. v. Thermal and Electronics Industries, Inc., 450 F.2d 1164 (3d Cir. 1971), holding that “the term ‘printed’ as used in Section 102 can include documents duplicated by modern methods and techniques, including the now well established process of microfilming.” These cases opened the door to newer technologies, including posts on the Internet, as qualifying as “printed publications.” These cases also emphasized that a key factor in determining whether a reference constitutes a printed publication is if the reference has been disseminated or otherwise made available to the extent that persons ordinarily skilled in the art, exercising reasonable diligence, can locate it.
This concept also was applied to foreign patents or foreign patent applications in In re Wyer, 655 F.2d 221 (CCPA 1981). In In re Wyer, the reference was a patent application laid open to public inspection by the Australian Patent Office. The abstract of the application was published by the Australian Patent Office. Further, the disclosure of the Australian application was the same as the U.S. patent in dispute. Id. at 222. The reference was available as: (1) a microfilm copy of the Australian application preserved in the Australian Patent Office on a security reel; (2) a microfilm copy of the application cut up and used to make diazo copies; and (3) the diazo copies of the original microfilm, which were distributed to regional offices of the Australian Patent Office. Id. at 223. Equipment was available to the public in the Australian Patent Office and regional offices to display enlarged reproduction of the diazo copies. Id.
The court in In re Wyer agreed with the approach adopted in I.C.E. Corp. and Philips. Id. at 226 (noting that “the question to be examined under § 102(b) is the accessibility to at least the pertinent part of the public, of a perceptible description of the invention, in whatever form it may have been recorded”). Given the particular facts of this case, the court held that the contents of the application were sufficiently accessible to the public and to persons skilled in the pertinent art to qualify as a “printed publication.” Id. at 226-27.
In Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006), the reference was two drawings that were included a Canadian patent application as originally filed, but which were cancelled during prosecution and were not included the issued patent. Id. at 1376 (noting that the drawings remained in the issued patent’s file wrapper). Following In re Wyer, the court found that the patent application and the two cancelled figures associated with it were “publicly accessible” and thus were a “printed publication” under 35 U.S.C. § 102(b). Id. at 1378. Further, the court reasoned that the issued patent was a “roadmap” to the application file and concluded that a person of ordinary skill in the art interested in the relevant subject matter and exercising reasonable diligence could locate the application, including the cancelled figures. Id. at 1379 (noting that whether the patent application was catalogued or indexed in a meaningful way did not matter because the issued patent was indexed and could serve as a “research aid”).
Courts also have addressed to what extent a U.S. provisional patent application can be prior art. In Dynamic Drinkware, LLC. v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), the issue was whether a patent, which was potential prior art under 35 U.S.C. § 102(e), was entitled to the benefit of the filing date of the provisional patent application to which it claimed priority. Id. at 1377. In this case, the CAFC found that the reference patent was not entitled to the effective date of its provisional application. In so doing, the CAFC asserted that “[a] reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. at 1381 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981). The CAFC concluded that “[a] provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.” Id. at 1382 (emphasis added). As a result of this case, the U.S. Patent and Trademark Office revised MPEP § 2136.03, which discusses the critical date of a reference.
Whereas Dynamic Drinkware addressed this issue with regard to U.S. patents, Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093, Paper No. 69 (PTAB Jan. 7, 2016), addressed this issue with regard to published U.S. patent applications. In Ariosa Diagnostics, the reference was a U.S. patent application publication having a filing date after the critical date of the patent in dispute, but claiming priority to an earlier filed provisional application. Id. at p. 5. In following Dynamic Drinkware, the Board found that the petitioner did not demonstrate that the reference patent application publication was entitled to the effective date of its earlier filed provisional patent application because it failed to demonstrate that the claims of the published application were supported by the disclosure of the provisional application under 35 U.S.C. § 112, first paragraph. Id. at p. 14. Thus, the reference patent application was determined not to be a printed publication. The CAFC affirmed with a minimal written decision. Ariosa Diagnostics, Inc. v. Illumina, Inc., 2016-2388, 2017-1020 (CAFC, December 11, 2017). Ariosa filed a petition for a writ of certiorari with the U.S. Supreme Court on July 11, 2018. The petition for certiorari, however, was denied on June 24, 2019.
At first glance, it appears that Dynamic Drinkware and Ariosa Diagnostics conflict with Milburn. Unfortunately, neither the CAFC nor the U.S. Supreme Court provided any guidance with respect to the issues raised in Ariosa Diagnostics. We hope to provide a more extensive analysis of Ariosa Diagnostics in the near future.
Our next post in this series is related to whether theses, dissertations, and other references in a library constitute printed publications: What Constitutes a Printed Publication – Theses, Dissertations, and other References in a Library – Part 3