A common occurrence in a university setting is a faculty member or student presenting their research results at scientific conferences, either in an oral presentation or in a poster session.
This is the fourth 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; our second post examined whether patents and published patent applications can be printed publications; and our third post discussed whether theses, dissertations, and other references in a library can be printed publications. These posts can be viewed here: What Constitutes a Printed Publication – Introduction and Statutory Basis – Part 1; What Constitutes a Printed Publication – Patents and Published Patent Applications – Part 2; and What Constitutes a Printed Publication – Theses, Dissertations, and other References in a Library – Part 3
In Regents of the University of California v. Howmedica, Inc., 530 F. Supp. 846 (D.N.J. 1981), the references related to a lecture presented by two co-inventors of the patent in dispute to a group of about 30 people at an annual meeting of an association of medical doctors two days prior to the critical date of the patent in dispute. Id. at 849-50. No confidentiality or secrecy was required of the participants of the meeting, no sales representative of the licensee attended the meeting, and no sales brochures were in existence at the time of the meeting. Id. at 850 (also noting that a press conference was held at the end of the meeting). During the lecture, slides that showed certain aspects of the invention were projected. Id. Otherwise, the public did not have access to the slides prior to the critical date and no prints of the slides were made prior to the critical date. Id.
The court held that the lecture did not constitute a “printed publication” because the projection of the slides at the lecture was limited in duration and therefore could not disclose the invention to the extent necessary to enable one of ordinary skill in the art to make or use the invention. Id. at 860. Further, the court noted that the public did not have access to the slides prior to the critical date and no prints of the slides were made prior to the critical date. Id. Thus, the court concluded that no evidence existed that “the ‘publication’ was disseminated or otherwise made available to the extent that persons interested in the information could locate it and put to use the essentials of the claimed invention.” Id. (citing I.C.E. Corp. v. Armco Steel Corp., 250 F. Supp. 738 (S.D.N.Y.1966)).
In Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985), the reference was a paper orally presented by an inventor of the patents in dispute at a scientific conference attended by between 50 to 500 scientists. Id. at 1108. Prior to the conference, the inventor gave a copy of the paper to the head of the conference and, afterward, copies were distributed on request, without any restrictions, to as many as six persons, more than one year before the filing date of the patents in dispute. Id. at 1108-09. The court held that the activity constituted a “printed publication” because “between 50 and 500 persons interested and of ordinary skill in the subject matter were actually told of the existence of the paper and informed of its contents by the oral presentation, and the document itself was actually disseminated without restriction to at least six persons.” Id. at 1109. In this case, whether the copies were freely distributed to interested members of the public was a key consideration in the court’s analysis. See also Medtronic, 891 F.3d at 1381, infra.
In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), involved a printed slide presentation made by the inventors and a colleague at a scientific conference. Id. at 1347. The slide presentation was displayed on poster boards continuously for two and a half days at the meeting. Id. A month later that same year, the same slide presentation was put on display for less than a day at an agricultural experiment station at a university. Id. Both parties agreed that the slide presentation at the scientific meeting and at the agricultural experiment station disclosed every limitation of the invention disclosed in patent application. Id. Further, no disclaimer or notice to the intended audience prohibiting note-taking or copying of the slides was made at either the scientific meeting or at the agricultural experiment station, no copies of the presentation were disseminated, and the presentation was never catalogued or indexed in any library or database. Id.
The court considered the following factors before determining whether or not the slide presentation was sufficiently publicly accessible to be considered a “printed publication” under § 102(b):
• the length of time the display was exhibited;
• the expertise of the target audience;
• the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied; and
• the simplicity or ease with which the material displayed could have been copied.
The court noted that “[t]hese factors aid in resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a “printed publication” under § 102(b)”. Id. at 1350 (further noting that it is only by “considering and balancing these factors can we determine whether or not [a] reference was sufficiently publicly accessible to be a ‘printed publication’”).
With regard to the length of time the display was exhibited, the court noted that “[t]he duration of the display is important in determining the opportunity of the public in capturing, processing and retaining the information conveyed by the reference. The more transient the display, the less likely it is to be considered a ‘printed publication.‘“ Id. at 1350-51. (citing Howmedica, 530 F. Supp. at 860, which held that a presentation of lecture slides that was of limited duration was insufficient to make the slides “printed publications” under § 102(b)). The court further stated that “[c]onversely, the longer a reference is displayed, the more likely it is to be considered a ‘printed publication.‘“ Id. at 1351 (noting that the slide presentation in this case was displayed for approximately two and a half days at the meeting and for less than one day at the agricultural experiment station).
With regard to the expertise of the intended audience, the court quoted Judge Learned Hand in Jockmus v. Leviton, 28 F.2d 812, 813-14 (2d Cir. 1928), who stated that a reference, “however ephemeral its existence,” may be a “printed publication” if it “goes direct to those whose interests make them likely to observe and remember whatever it may contain that is new and useful.” Id. (noting that in this case, the intended target audience at the meeting and at the agricultural experiment station included those having ordinary skill in the art of the subject patent application).
With regard to the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, the court noted that it would be more reluctant to find something a “printed publication” where “professional and behavioral norms entitle a party to a reasonable expectation that the information displayed will not be copied.” Id. (noting that “[t]his reluctance helps preserve the incentive for inventors to participate in academic presentations or discussions“). In instances, however, where parties have taken steps to prevent the public from copying temporarily posted information, the court noted that the opportunity for others to appropriate that information and assure its widespread public accessibility is reduced. Id. (noting that such “protective measures could include license agreements, non-disclosure agreements, anti-copying software or even a simple disclaimer informing members of the viewing public that no copying of the information will be allowed”). In this case, the court found that no measures were taken to protect the information that was displayed on the slides; the professional norms under which the slides were displayed did not give rise to a reasonable expectation that the slides would not be copied; and there was no disclaimer discouraging copying, thus any viewer was free to take notes or even to photograph the slides outright. Id.
Finally, with regard to the ease or simplicity with which a display could be copied, the court noted that the more complex a display, the more difficult it would be for members of the public to effectively capture its information. Id. In this case, the court concluded that copying only a few slides would have been sufficient to capture the novel information related to the invention. Id. at 1351-52. In sum, after considering all of the above factors, the court found that the printed slide presentation was sufficiently publicly accessible to constitute a “printed publication” for the purposes of 35 U.S.C. § 102(b). Id. at 1352.
In Oxford Nanopore Technologies Ltd. v. University of Washington, IPR2014-00513, Paper No. 51 (PTAB Feb. 26, 2016), the reference was a poster presented by an undergraduate student at a poster session at a university summer research program. Id. at p. 21. The attendees at the poster presentation were predominately mentors, friends, family members, and members of the laboratory in which the students worked over the summer. Id. at p. 27. At the conclusion of the three-hour event, the posters were immediately removed from the room and no steps were taken to catalogue or index the posters. Id. at p. 27-28.
The Board concluded the evidence did not show that the poster would have been accessible to interested and ordinarily skilled in the art exercising reasonable diligence. Id. at p. 33. Thus, the Board concluded that the evidence did not show that the poster qualified as a printed publication. Id. The Board reached a similar conclusion regarding an abstract of the poster that was included in the event program that was posted on the university website and distributed without restriction during and after the poster presentation. Id. at p. 34-35 (noting that the fact that the abstract was distributed at the poster session did not persuade the Board that it was accessible to those of interest and skill in the art and that the evidence presented did not establish that the abstract was ever catalogued or indexed in any library or database such that an interested and ordinarily artisan exercising due diligence could have located the document). Id. at p. 35.
In Coalition for Affordable Drugs VIII, LLC v. Trustees of the Univ. of Pa., IPR2015-01835, Paper No. 56 (PTAB Mar. 6, 2017), the reference was slide presentation made to a group of investment analysts. Id. at p. 8. The slide presentation was presented live and via webcast. Id. at p. 15. A hyperlink to the webcast was distributed to interested parties and the event was reported in the PINK SHEET. Id. The Petitioner asserted that the event “was targeted to financial analysts, investors, and skilled artisans interested in drug discovery and development.” Id. at p. 15. The Petitioner further asserted that there was no evidence of an intent to keep the slide presentation private and there was no expectation of privacy in the webcast presentation. Id. (further asserting that it would have been simple for one of ordinary skill in the art to copy the relevant information from the slide presentation). The Petitioner further asserted that the slide presentation was posted online on a clearly marked and indexed page. Id. at p. 16.
Despite such evidence, the Board concluded that the Petitioner did not meet its burden of establishing that the slide presentation constituted a printed publication. Id. at p. 18 (reaching its conclusion by following the factors articulated in Klopfenstein). First, the Board noted that there was nothing in the press release for event related to the actual disease to be treated or agents to treat such diseases. Id. at p. 19 (also noting that nothing in the press release suggested that one of ordinary skill in the related art should attend the presentation). Thus, although a skilled artisan might have been able to copy the presentation and that there might have been an expectation that the materials could be copied, there was no evidence establishing that the target audience would have been an ordinary artisan in the relevant field. Id. Further, the Board acknowledged that the slide presentation was reported in the Pink Sheet, but that the Pink Sheet actually published after the presentation. Id. Finally, the Board determined that the Petitioner did not demonstrate that the slides were posted online prior to the critical date. Id. at p. 20 (noting that “Wayback Machine” screenshots showed evidence of a hyperlink prior to the critical date, but the hyperlink (which was defunct) did not show the actual slides).
In Medtronic, Inc., v. Barry, 891 F.3d 1368 (Fed. Cir. 2018), the references were a video demonstration and related slide presentation presented to a group of spinal surgeons at three different industry meetings and conferences. Id. at 1374. Binders containing relevant portions of the slides also were distributed at two of the conferences. Id. at 1379. One meeting was limited to about 20 members of a study group who were voted into membership by an executive board based on their qualifications, whereas the other two meetings were open to other surgeons. Id. at 1379-80 (noting one meeting was attended by approximately 20 surgeons, whereas the other meeting was attended by approximately 55 surgeons). Thus, in Medtronic, the court addressed the question of “whether the distribution of certain materials to groups of people at one or more meetings renders such materials printed publications under § 102(b).” Id. at 1381 (noting further that “the question becomes whether such materials were sufficiently disseminated at the time of their distribution at the conferences”).
After reviewing other related cases, the court identified the following factors that were relevant to this case:
• the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed;
• whether there is an expectation of confidentiality between the distributor and the recipients of the materials; and
• even if there is no formal, legal obligation of confidentiality, it still may be relevant to determine whether any policies or practices associated with a particular group meeting would give rise to an expectation that disclosures would remain confidential.
In this case, the court found that the Board did not fully consider all of the relevant factors, in particular the difference between the meeting limited to the study group members only and the other programs in which materials were distributed without restriction. Id. at 1382. Further, the court found that the Board did not address whether the study group members were expected to maintain the confidentiality of the distributed materials. Id. (noting that the relatively exclusive nature of the study group membership is only one factor in the public accessibility analysis). The court further noted that “[d]istributing materials to a group of experts, does not, without further basis, render those materials publicly accessible or inaccessible, simply by virtue of the relative expertise of the recipients. The nature of those meetings, as well as any restrictions on public disclosures, expectations of confidentiality, or, alternatively, expectations of sharing the information gained, can bear important weight in the overall inquiry.” Id. at 1382-83. Accordingly, the court vacated the Board’s finding that the video and slides did not qualify as “printed publications” and remanded the case for further proceedings. Id. at 1383.
These cases provide several important factors in deciding whether a poster presentation or an oral presentation constitutes a printed publication. These factors include:
• the length of time the display was exhibited;
• the expertise of the target audience;
• the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied;
• the simplicity or ease with which the material displayed could have been copied.
• the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed;
• whether there is an expectation of confidentiality between the distributor and the recipients of the materials; and
• even if there is no formal, legal obligation of confidentiality, it still may be relevant to determine whether any policies or practices associated with a particular group meeting would give rise to an expectation that disclosures would remain confidential.
Our next post in this series is related to whether technical reports, government reports, and related documents constitute printed publications: What Constitutes a Printed Publication – Technical Reports, Government Reports, and Related Documents – Part 5
Leave a Reply