Federal Circuit IP
Weber, Inc. v. Provisur Technologies, Inc.
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.
Background
- 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)
Holding
- Weber’s operating manuals were sufficiently publicly accessible to constitute printed publication prior art. Remanded to PTAB for consideration.
Reasoning
- 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.
Takeaways
- 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.