Although not as common as public disclosures related to theses, dissertations, and presentations at scientific meetings, disclosures in technical reports, government reports, and related documents can arise, for example, as a result of faculty collaborations with industry groups, trade organizations, government agencies, and the like, some of which might be obligated to periodically publish research results from such collaborations.
This is the fifth 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; and our fourth post investigated under what circumstances presentations at scientific conferences 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; and What Constitutes a Printed Publication – Presentations at Scientific Conferences – Part 4
In Garrett Corp. v. United States, 422 F.2d 874 (Ct.Cl. 1970), the reference was a report by a British government agency. Id. at 877. About 80 copies of the report were distributed in Great Britain to various British government agencies, American government personnel in Great Britain, and six commercial companies. Id. at 878. The report was unclassified and unrestricted in its use. Id. The court noted that although distribution to government agencies and personnel alone may not constitute publication, distribution to commercial companies without restriction on use clearly does. Id. (noting that the fact that the report was made available for dissemination in the United States through the Defense Department to government contractors who were advised of its availability and could obtain copies upon request at no cost also was pertinent). Thus, the court determined that the report was a “publication” within the meaning of 35 U.S.C. § 102(b). Id. (finding that distribution in Great Britain and evidence of availability in the United States to an interested segment of the public shows an intent to make the contents of the report freely accessible).
In Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988), the reference was a specification sheet distributed to the public by one of the alleged infringers. Id. at 1568. There was no evidence, however, that the specification sheet was actually received by the public before the critical date. Id. The CAFC relied on evidence of routine business practice to show that the specification sheet was available and accessible to the interested public to find that the specification sheet was a printed publication. Id. at 1569 (citing In re Hall, 781 F.2d at 899). The court further noted that if public accessibility is proved, i.e., whether interested members of the relevant public could obtain the information if they wanted to, there is no requirement to show that members of the public actually received the information. Id.
In Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir. 1990), the reference related to reports describing a complex military system. Id. at 936. The reports were not under security classification and were distributed to approximately fifty persons or organizations involved in the project. Id. One such document contained the legend “Reproduction or further dissemination is not authorized … not for public release.” Id. Further, the company maintaining the documents housed them in a proprietary library with access restricted to persons authorized by the company. Id. Under these circumstances, the CAFC found that the document was not sufficiently available to the public. Id. at 936-37 (affirming the district court’s conclusion the documents were not printed publications).
In Cooper Cameron Corporation, v. Kvaerner Oilfield Products, Inc., 291 F.3d 1317 (Fed. Cir. 2002) (rehearing and rehearing en banc denied July 11, 2002), the references were a series of reports developed as part of a joint venture. Id. at 1323. The joint venture released the reports to its three members and six participants. Id. Evidence presented at trial indicated that the reports were not considered confidential and were distributed to interested parties, including outside contractors. Id. A second, interim report also was submitted to the Commission of European Communities. Id. at 1323-24 (noting that the report only contained a single confidentiality notice relating to financial information on one page out of 130 pages). The court concluded that this notice did not render the entire document publicly inaccessible in light of evidence that the reports were available to participants who were allowed to share confidential data with others. Id. at 1324 (distinguishing these reports with those in Northern Telecom). Thus, the court found that the reports were printed publications. Id. (reversing the district court’s grant of summary judgment that the reports were not “printed publications”).
In Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340 (Fed. Cir. 2008), the reference was a collection of technical specifications that formulated an industry standard. Id. at 1350. In contrast to Northern Telecom, the document was not secluded under a similar veil of secrecy. Id. (noting that although the technical specifications were drafted within smaller technical subcommittees, they were widely distributed before the critical date). Further, versions of the standard were publicly available, companies took part in development of the standard and had access to the technical specifications, and the specifications themselves were visible to any member of the interested public without requesting them from the sponsoring organization, and the organization did not impose restrictions on members to prevent them from disseminating information about the standard to non-members. Id. at 1350-51. Although archival paper copies of the standard were maintained in a limited-access facility, the record did not show that the standard closed to public access. Id. (noting that the given the purpose of the standard it was crucial to grant access to any interested parties). The court found that the standard was “sufficiently accessible, at least to the public interested in the art.” Id.
In a situation that arises often in an academic setting, in Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009), the references were two monographs prepared by the inventor. Id. at 1333. One monograph was given to approximately six faculty during an oral presentation at the inventor’s original university. Id. Pursuant to certain agreements, the inventor later gave copies of the monograph to two companies while attempting to commercialize the technology. Id. (noting that neither agreement required confidentiality and one agreement specifically stated that the company “shall not be committed to keep secret any idea or material submitted”). After revising the original monograph, the inventor gave a copy of both the original and the revised monograph to a technician from whom he was seeking fabrication assistance and also gave a copy of the revised monograph to a physician (who then gave it to a technician setting up the inventor’s laboratory at the inventor’s new university) and to the university as part of a research proposal. Id.
In this case, the court addressed “whether the distribution to a limited number of entities without a legal obligation of confidentiality renders the monographs printed publications under § 102(b).” Id. at 1333 (noting that where a distribution is made to a limited number of entities, a binding agreement of confidentiality may defeat a finding of public accessibility, but that such a binding legal obligation is not essential). The court also noted that “[w]here professional and behavioral norms entitle a party to a reasonable expectation” that information will not be copied or further distributed, “we are more reluctant to find something a `printed publication.'” Id. at 1333-34 (quoting In re Klopfenstein, 380 F.3d at 1350-51).
With regard to the inventor’s distribution of the monograph to his university colleagues, the court noted that “professional norms may support expectations of confidentiality.” Id. at 1334 (citing In re Klopfenstein, 380 F.3d at 1351). Thus, the court concluded that the inventor’s distribution of the monographs to his academic and research colleagues did not render the monographs prior art printed publications. Id.
With regard to distribution of the monographs to the two commercial entities, the court found that there was sufficient evidence to support a conclusion that there was an expectation of confidentiality between the inventor and each of the two commercial entities. Id. (noting that although one agreement disclaimed a confidentiality requirement, the inventor testified that he requested confidentiality during subsequent discussions); Cf. In re Garrett, 422 F.2d at 878 (providing that “[w]hile distribution [of a government report] to government agencies and personnel alone may not constitute publication, distribution to commercial companies without restriction on use clearly does”). Further, there was no suggestion that the request for confidentiality was not honored. Id. at 1334-35 (reasoning that the fact that there was no legal obligation of confidentiality was not in and of itself sufficient to show that the inventor’s expectation of confidentiality was not reasonable). Accordingly, the court found that neither of the monographs constituted printed publications under 35 U.S.C. § 102(b). Id. at 1335 (affirming the district court’s decision).
In Los Angeles Cnty. Metro. Transp. Auth. v. Transport Technologies, LLC, IPR2016-01633, Paper No. 22 (PTAB Nov. 17, 2017), the reference was a draft report prepared by working group within an industry organization. Id. at 6. The draft report allegedly was made publicly accessible when a copy of the report was made available on a CD at a meeting of the working group. Id. at p. 10. The Board concluded that the draft report did not qualify as a printed publication. Id. at p. 7. In reaching this decision, the Board distinguished the facts of this case from those in Garrett. In this case, the record did not indicate that anyone other than the attendees of the board meeting were advised of the availability of the draft report. Id. at 17 (noting that attendees of the meeting were members of the working group, not members of the public and that members paid a fee to sit on the board). Further, the record did not provide any evidence that that persons ordinarily skilled and interested would have been aware of the meeting or that the contents of the draft report were freely accessible. Id. at 17 (citing In re Garrett, 422 F.2d at 878).
The Board also distinguished this case from MIT v. AB Fortia, noting that significantly fewer attendees were present and fewer copies of the CD containing the report were obtained. Id. at 18 (noting that it was not known whether any attendee made the CD containing the report available to members of their organization). The Board further distinguished this case from Cooper Cameron, noting that the less than twenty attendees of the board meeting would not have been a significant portion of the interested public and that the petitioner did not submit sufficient evidence that demonstrates that an interested person ordinarily skilled in the art could have exercised reasonable diligence to obtain the draft report. Id. at 19 (citing Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 943 (Fed. Cir. 1990). The Board further noted that it could infer from the record that the draft report was subject to a reasonable expectation of confidentiality and ‘[w]here professional and behavioral norms entitle a party to a reasonable expectation that information will not be copied or further distributed, [the court is] more reluctant to find something a printed publication.” Id. at 20 (quoting Cordis Corp., 561 F.3d at 1133-34). Accordingly, in this case, the Board stated that the evidence indicated that the draft reports of this particular industry group are not shared with the public and, although the evidence did not show that the draft report included a notice of confidentiality, the evidence suggested that the draft report was treated as confidential. Id. at 20-21. Thus, the Board concluded that such evidence weighted against a finding of public accessibility. Id. at 21.
In Activision Blizzard, Inc. v. Acceleration Bay, LLC, IPR2015-01970, Paper 106 (PTAB Mar. 23, 2017), the reference was a technical report submitted electronically to an online library maintained by a university department. Each report submitted to the library was assigned a unique identifier based on the year it was uploaded and the relative order in which it was uploaded in comparison to other reports. Although the report was technically accessible prior to the critical date of the patent in dispute, the Board reasoned that ‘“public accessibility” requires more than technical accessibility – there must be evidence that the reference was disseminated or otherwise made available in a way that the interested public could locate it using reasonable diligence.” Id. at page 14 (citing Blue Calypso, 815 F.3d at 1348).
In this case, the record did not show that the report was disseminated to members of the interested public or that any member of the public accessed the report after it was posted. Id. at 14-15. Further, nothing in the record suggested that the department’s online library was indexed by a commercial internet search engine. Id. at 15. Thus, the Board looked to whether a person of ordinary skill in the art interested in the subject matter of the report would have been independently aware of the department’s online library’s website and whether such a person, upon accessing the website, would have been able to find the report. Id. (citing Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380-81 (Fed. Cir. 2012).
The Board found that the although the website was publicly accessible, the record did not indicate that the website was “well known to the community interested in” the relevant subject matter as in Voter Verified. Id. at 15-16 (quoting Voter Verified, 698 F.3d at 1380). Thus, the Board analogized the library website to a traditional library in which technical or scientific papers are shelved, in which the CAFC has determined that public accessibility was based on evidence related to the library’s procedure for indexing, cataloging, and shelving. Id. at 16 (citing In re Hall, 781 F.2d at 899-900). In light of evidence that the website’s search function was deficient, e.g., it was unable to provide any results for searches on the title and abstract fields using relevant terms or phrases, the Board was not persuaded that a person of ordinary skill in the art could have located the reference by viewing the list of available reports by author or year on the library website. Thus, the Board concluded that the library was not searchable or indexed in a meaningful way so that a person of ordinary skill in the art would have located it. Id. at 23.
Finally, with regard to a webpage maintained by one of the authors of the report that allegedly had a link to the report, the Board concluded that there was no evidence that the report was viewed or downloaded from the author’s webpage. Further, no evidence suggested that one of ordinary skill in the art would have found the author’s webpage using an internet search engine. This conclusion is in contrast to that in Voter Verified, in which the website was well known to the interested community and contained more than 100 articles related to the relevant subject matter. Voter Verified, 698 F.3d at 1380; see also Blue Calypso, 815 F.3d at 1349-50. In sum, the Board found that the technical report was not publicly accessible before the critical date.
On appeal, the CAFC concluded that the Board did not err in concluding the report was not a printed publication. Acceleration Bay, LLC, v. Activision Blizzard, Inc., 908 F.3d 765, 773 (Fed. Cir. 2018). The CAFC further distinguished this case from In re Lister, 583 F.3d 1307 (Fed. Cir. 2009), in which the CAFC explained that “[a] reasonably diligent researcher with access to a database that permits the searching of titles by keyword would be able to attempt several searches using a variety of keyword combinations.” In re Lister, 583 F.3d at 1315-16. Unlike Lister, however, the library website’s advanced search function did not successfully permit keyword searching of titles, a key feature in Lister. See id. The Board’s fact finding that, with available reports indexed only by author or year, the report was not meaningfully indexed, is supported by substantial evidence. Acceleration Bay, 908 F.3d at 774.
Our next post in this series is related to whether sales catalogs and technical brochures constitute printed publications: What Constitutes a Printed Publication – Sales Catalogs and Technical Brochures – Part 6