Prior to the passing of the Leahy–Smith America Invents Act, commonly referred to as the AIA, one of the prerequisites for obtaining a patent was succinctly captured under 35 U.S.C 102(b). In relevant part, Section 102(b) states that a person shall be entitled to a patent, “unless the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country ….” (emphasis added). The term “printed publication” survived the passage of the AIA, which was signed into law in September 2011, and reappeared in 35 U.S.C. 102(a)(1) of the AIA.
In addition to the prior art categories of the printed publication bar, the public use bar and the on-sale bar, the above provision of the AIA added a “catch-all” clause defining an additional category of potential prior art not provided for in Section 102 prior to the AIA. The “catch-all” clause provides specifically that a claimed invention would not be entitled to a patent if it was “otherwise available to the public” prior to its effective filing date. Section 102(a)(1) of the AIA states that a person shall be entitled to a patent, “unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date …” (emphasis added). This “catch-all” clause places the focus of the inquiry on whether the disclosure was “available to the public.” As discussed below, in some ways, the “catch-all” provision codifies the essence of longstanding judicial interpretation of the term “printed publication.” This article focuses on some recurring issues in case law in the inquiry or determination of whether a reference qualifies as a “printed publication” and provides some pointers if avoiding this categorization is desired.
II. What Is a Printed Publication?
According to the Manual of Patent Examining Procedure, a reference is proven to be a “printed publication” upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it,” MPEP Section 2128, citing In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981) (internal citations omitted). The term is broadly interpreted and not restricted to “printed” material. Any electronic publication, including an online database, an Internet hosted material such as a web discussion group, forum, digital video and/or social media post, may fall under the category of a “printed publication” under both the AIA’s Section 102(a)(1) and the pre-AIA Section 102(a) and (b), provided the publication was locatable to someone exercising reasonable diligence.
The Federal Circuit has opined that “public accessibility is the touchstone, which can be established by demonstrating that persons interested and ordinarily skilled in the subject matter can reasonably locate it,” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Per the Federal Circuit, the determination of whether a material is a “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the disclosure of the material to members of the public, In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). This effectively collapses the inquiry of whether a material is a “printed publication” into the nature and degree of public accessibility to the material in question.
III. Sufficient Dissemination at the Relevant Time
In a recent case, the Federal Circuit was presented with the issue of whether a video and slides distributed at several surgical society meetings and symposiums, were publicly accessible, and thus, qualified as prior art. In Medtronic Inc., v. Barry, 891 F.3d 1368 (Fed. Cir. 2018), Medtronic was taken to court over alleged infringement of certain patents. During inter-partes review proceedings, Medtronic asserted that the claims of the patents in question were obvious over three references, including the video and slides that had been distributed to surgeons and members of a spine deformity study group. Prior to the case reaching the Federal Circuit, the Patent Trial and Appeals Board had determined that the video and slides were not prior art as they were not publicly accessible. The Federal Circuit found otherwise and vacated this finding. The Federal Circuit determined that the materials in question could be considered sufficiently accessible to persons interested in the art, with the important considerations including: the size and nature of the meetings, whether they were open to people interested in the subject matter of the material disclosed and the expectation of confidentiality between the distributor and the recipients of the materials.
Because the determination of whether a material is a “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the disclosure of the material to members of the public, a relevant issue has been the means of retrieving the material. In one case, the specific issue was whether indexing in a database is required for an online article to qualify as publicly available prior art. In Voter Verified, Inc. v. Premier Election Solutions, Inc.,698 F.3d 1374 (Fed. Cir. 2012), an article posted online was deemed by the Federal Circuit to be a “printed publication,” although it was not indexed in a database, because: (a) the website was known to the interested public; (b) submissions were considered public and could be copied; and (c) the website had an internal search tool that could be used to locate the article. In another case, the Federal Circuit held that a Usenet newsgroup post was a “printed publication” because: (a) the audience included skilled artisans; (b) the newsgroups were organized in a hierarchical manner and were easily navigated; and (c) it was sufficiently disseminated because it got responses and others may have viewed it without posting responses, Suffolk Techs. LLC v. AOL Inc., 752 F.3d 1358 (Fed. Cir. 2014).
IV. Preserving Confidentiality
Another issue given weight by the courts is whether there were policies or actions taken to preserve confidentiality or limit accessibility, and to what degree or extent those actions were carried out. A paper that was orally presented to between 50 and 500 persons at a scientific meeting open to all persons interested in the subject matter, with written copies distributed without restriction to anyone who requested was deemed to be a “printed publication,” Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985). A publicly displayed document that was visible to persons of ordinary skill in the art and who were not restricted from copying it could constitute a “printed publication,” even if it was not disseminated by the distribution of reproductions or copies and/or indexed in a library or database. In re Klopfenstein, 380 F.3d 1345, 1348, 72 USPQ2d 1117, 1119 (Fed. Cir. 2004).
On the other hand, documents that were only distributed internally within an organization and were intended to remain confidential were not categorized as “printed publications,” regardless of how many copies were distributed. Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990).The intention to preserve confidentiality may be shown with an existing policy or agreement of confidentiality, documented steps and/or industry norms. In Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009), the issue was whether a set of research papers distributed by a doctor to certain colleagues and two commercial entities rendered the documents “printed publications.” Here, the Federal Circuit concluded that the documents in question were not publicly accessible because academic norms gave rise to an expectation that the disclosures would remain confidential, and there was an expectation of confidentiality between the doctor and the two commercial entities.
In summary, in order to qualify as prior art under the “printed publication” category for both the pre-AIA and AIA sections on patentability, a material in question must be “sufficiently accessible to the public interested in the art” at the relevant time. Some key practice points may be derived from case law if avoiding this categorization is desired. First, steps may be taken to limit the distribution and accessibility of materials, with those steps being documented. For example, if a video is posted on a website, the site may be configured to require a password to limit access. Files transferred via electronic mail may be encrypted with additional passwords. Second, an expectation of confidentiality may be emphasized to those accessing the materials. Examples of this may include using non-disclosure agreements and placing warning labels (e.g. “Confidential: Proprietary Material”) on documents, slides in a presentation, CDs distributed at a closed conference, electronic mail and other digital media.