A common occurrence in a university setting is the oral defense of a thesis or dissertation and the subsequent publication and indexing of the thesis or dissertation in a library. Although publication of a thesis or dissertation can be “embargoed,” i.e., delayed for a certain period of time, whether the oral defense constitutes a “printed publication” also must be considered. The courts have issued several decisions related to whether a thesis or dissertation, as well as other references in a library, constitute a printed publication.
This is the third 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 and our second post examined whether patents and published patent applications 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
In In re Bayer, 568 F.2d 1357 (CCPA 1978), the reference was a master’s thesis defended before a faculty committee and received by a university library before the critical date of the patent in dispute. In this case, the patent examiner initially took the position that the thesis was available as a reference as of its date of receipt by the library and further contended that the thesis defense before the committee consisting of an adviser and two other faculty members, which occurred prior to the submission of the thesis to the library, constituted an announcement to the scientific community, at least to the University, that such subject matter was available by its title and its author. Id. at 1358. The court addressed whether an “uncatalogued, unshelved thesis, by virtue of its accessibility to the graduate committee, is a ‘publication’ within the meaning of 35 U.S.C. § 102(b).” Id. at 1359.
The court stated that although “a printed document may qualify as a ‘publication’ under 35 U.S.C. § 102(b), notwithstanding that accessibility thereto is restricted to a ‘part of the public,’ so long as accessibility is sufficient ‘to raise a presumption that the public concerned with the art would know of [the invention],’” accessibility to the thesis by the three members of the graduate committee does not raise such a presumption. Id. at 1361. Further, since the thesis “could have been located in the university library only by one having been informed of its existence by the faculty committee, and not by means of the customary research aids available in the library, the ‘probability of public knowledge of the contents of the [thesis],’…was virtually nil.” Id. (citing In re Tenney, 254 F.2d at 626). The court also noted that delays in the cataloguing and shelving of the thesis by the library did not give rise to the thesis qualifying as a printed publication because the date on which the public actually gained access to the invention is the focus of the inquiry. Accordingly, the court held that the thesis did not constitute a “publication” within the meaning of 35 U.S.C. § 102(b). Id. at 1362 (thereby overturning the Board’s decision).
In In re Hall, 781 F.2d 897 (Fed. Cir. 1986), the reference was a single doctoral thesis catalogued and shelved in a German university library. The court affirmed the Board’s determination that the reference qualified as “printed publication.” Id. at 899-900 (rejecting the argument that a single cataloged thesis in one university library does not constitute sufficient accessibility to those interested in the art exercising reasonable diligence). In reaching their decision, the CAFC considered an affidavit from the university librarian regarding the date the dissertation was received by the library and the library’s general practice of indexing, cataloguing, and shelving dissertations. Id. at 899 (distinguishing the facts of this case over those in In re Bayer).
In In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989), the references were three undergraduate theses, which were orally presented to a defense committee made up of four faculty members. Id. at 1159. A copy of each thesis was filed in the main college library and in the library of the particular department in which the student’s work was done. Id. The theses were listed on individual index cards, which showed the student’s name and the title of the thesis. The index cards were filed alphabetically by the author’s name. Id. Both the index cards and the theses themselves were available for public examination. Id. The theses, however, were not generally indexed in either the main library or the departmental library. The court found that, as in Bayer, but unlike In re Hall, the three student theses were not accessible to the public because they had not been either cataloged or indexed in a meaningful way. Id. at 1161. Accordingly, the three undergraduate student theses were not “printed publications” under 35 U.S.C. § 102(b). Id.
In Dish Network, L.L.C. v. Dragon Intellectual Property, LLC, IPR2015-00499, Paper No. 7 (PTAB July 17, 2015), the reference was an undergraduate thesis, which was date stamped prior to critical date of the patent in dispute. In this case, the reference did not qualify as a “printed publication” because sufficient evidence of the university library’s practice of indexing and cataloging theses was not presented before the Board.
In Unified Patents, Inc. v. Sound View Innovations, LLC, IPR2018-00599, Paper No. 50 (PTAB September 9, 2019), the reference was a copy of a doctoral dissertation submitted by the author to a university library. Based on expert testimony, the Board found that, although the dissertation was only searchable by author and title through the university’s online catalog, a keyword search also would have found the dissertation. Further, the university’s catalog record was added to a web portal, which made it accessible to more than 10,000 libraries worldwide. Thus, the Board determined that the dissertation was catalogued, indexed or searchable by a search engine, and publicly available prior to the critical date.
In addition to theses and dissertations, the courts also have addressed whether certain references in a library constitute printed publications.
In In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011), the references were documents located in a Norwegian University library that were submitted to the USPTO by a third-party re-examination requester. Id. at 1294. Each volume of the reference was marked as received and catalogued on a date more than one year prior to the critical date. Id. (noting that the documents were stamped on receipt, classified under an appropriate subject matter category, and loaded into an online catalogue that allowed searching by author, title, classification number, subject heading, and other fields). The CAFC found that the reference was available to one of ordinary skill in the art exercising reasonable diligence and that the reference is a “printed publication” under § 102(b). Id. at 1297 (upholding the Board’s decision).
In Telefonaktiebolaget LM Ericsson v. TCL Corp., 2017-2381, 2017-2385 (CAFC Nov. 7, 2019), the reference was an article published in a German journal. In this case, the cover of the journal in which the article was published was dated May/June 1996. The filing date of the patent in dispute was July 1, 1997. Sworn declaration of a librarian at a university library in Germany indicated that the May/June issue of the journal was inventoried on June 18, 1996, and publicly accessible after a processing time of 1-2 days. The CAFC held that substantial evidence supported the Board’s ruling that the article was accessible to the public in the May/June 1996 timeframe. Accordingly, the CAFC affirmed the Board’s decision that the reference was available as prior art.
These cases indicate that evidence documenting the procedures used to index and catalogue a particular reference, as well as the searchability of the reference by author, title, classification number, subject heading, and other fields, can influence whether a reference constitutes a printed publication or not.
Our next post in this series is related to whether presentations at scientific conferences constitute printed publications: What Constitutes a Printed Publication – Presentations at Scientific Conferences – Part 4