Although not a situation that often arises in an academic setting, as more and more start-ups originate from universities, activities at trade shows and the like could become more prevalent for university inventors.
This is the sixth 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; our third post discussed whether theses, dissertations, and other references in a library can be printed publications; our fourth post investigated under what circumstances presentations at scientific conferences can be printed publications; and our fifth post considered whether technical papers, government reports, and related documents 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; What Constitutes a Printed Publication – Theses, Dissertations, and other References in a Library – Part 3; What Constitutes a Printed Publication – Presentations at Scientific Conferences – Part 4; and What Constitutes a Printed Publication – Technical Reports, Government Reports, and Related Documents – Part 5
In GoPro, Inc., v. Contour IP Holding LLC, 898 F.3d 1170 (Fed. Cir. 2018), the reference was a catalog distributed at a trade show attended by actual and potential dealers, retailers, and customers. Id. at 1173. The Board had previously found that the catalog was not a “printed publication” because no evidence was presented that the trade show was advertised to the public, such that one of ordinary skill in the art from the public would have known about the trade show. Id. at 1174-75. The CAFC vacated and the Board’s decision and remanded the case for further proceedings. Id. at 1177. In reaching this decision, the CAFC noted that the Board had focused too narrowly on the level of skill of the target audience. Id. at 1175 (noting that the expertise of the target audience can be a factor in determining public accessibility, but this factor alone is not dispositive).
In Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018), the reference was a catalog dated prior to the critical date of the patent in dispute and allegedly distributed at a technical conference. Id. at 1371. The CAFC affirmed the PTAB’s finding that catalog was publicly accessible and therefore qualified as a “printed publication.” Id. at 1377. The decision largely hinged on the testimony of declarants who stated that they obtained catalog at conference. Id. at 1376. This case is in contrast to In re Omeprazole Patent Litigation, 536 F.3d 1361, 1381 (Fed.Cir.2008), in which the court concluded that two company brochures were not printed publications because there was no evidence presented regarding the circulation and availability of the brochures.
These cases typically hinge on testimony regarding whether a catalog or brochure was distributed to the public interested in the art, what was disclosed in the catalog or brochure, the date the catalog or brochure was publicly available, and whether the public interested in the relevant subject matter knew of and attended the conference.
Our next post in this series is related to whether grant proposals and submissions to regulatory agencies constitute printed publications:What Constitutes a Printed Publication – Grant Proposals and Submissions to Regulatory Agencies – Part 7