Federal Circuit IP

Weber, Inc. v. Provisur Technologies, Inc.

By Tucker Mottl Published March 6, 2024

Federal Circuit 2022-1751, 2022-1813

February 8, 2024

(Reyna, Hughes, Stark; Precedential)

Summary: The Federal Circuit overturns the PTAB to find that despite limited distribution and copyright restrictions, Petitioner’s operating manuals are publicly accessible printed publications.


  • Appellate-Petitioner (Weber) filed IPR petitions on two patents (U.S. Patent Nos. 10,639,812 & 10,625,439) related to high-speed mechanical slicers asserting grounds based on operating manuals for their own slicer products.
  • Weber submitted evidence that operating manuals were accessible to interested members of the public, including employee testimony.
  • The PTAB’s institution decision found that the operating manuals are prior art printed publications.
  • Appellee-Patent Owner (Provisur) argues that the operating manuals are not printed publications because they were not publicly accessible under Cordis v. Boston Scientific.
  • The PTAB’s final written decision reversed course and found that operating manuals are not printed publications

Key Issue

  • Whether the public accessibility of operating manuals for Weber’s slicer was sufficient for them to be printed publications.

Applicable Rule/Statute

  • 35 U.S.C. § 102 provided for a “Printed Publication” to be prior art.
  • The standard for Printed Publication is “sufficiently accessible to the public interested in the art.” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004).
  • The standard for public accessibility is whether interested members of the relevant public could locate the reference by reasonable diligence. Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1372–73 (Fed. Cir. 2021)


  • Weber’s operating manuals were sufficiently publicly accessible to constitute printed publication prior art. Remanded to PTAB for consideration.


  • Weber’s operating manuals are readily distinguishable from pre-print academic monographs considered in Cordis v. Boston Scientific.
  • The copyright of Weber’s operating manuals provided multiple avenues for interested persons to access them, whereas the author-inventor in Cordis had a reasonable expectation of confidentiality based on academic norms.
  • Weber’s submitted evidence establishing that the operating manuals were publicly accessible (g., included with purchase of the slicer, available on-request, in factory showroom, at trade shows), whereas evidence in Cordis demonstrated that the monographs were not shared beyond the professors, colleagues, and companies to which the author-inventor distributed them.


  • Consider who has control over public accessibility evidence. If petitioner (g., Weber), consider submitting a factual declaration supporting public accessibility. If patent owner (e.g., Cordis), consider seeking discovery in support of public accessibility before filing IPR. There is a greater evidentiary challenge to establish public accessibility of patent owner’s documents than petitioner’s documents.
  • Encourage patent applicants/inventors to include confidentiality restrictions on pre-filing documents and presentations.
  • When assisting freedom-to-operate, non-infringement opinion, or otherwise engaging with a manufacturer, consider tailoring confidentiality restrictions and copyright to meet document confidentiality requirements. Careful asserting confidentiality boilerplate over documents that would make good prior art.
  • When searching for prior art, evaluate documents that have selective distribution—especially if they are petitioner’s documents.
  • If petitioner has evidence supporting public accessibility, consider submitting this evidence as a declaration in support of an IPR.