June 28th, 2018
Takeaway: Determining whether materials distributed at a conference or meeting qualify as prior art “printed publications” under 35 U.S.C. § 102(b) requires evaluating all relevant factors, such as the expectations of confidentiality between the distributor and the conference attendees.
The Federal Circuit recently clarified how to analyze the prior art status of materials distributed to a small group of people for a limited purpose, such as at a conference or meeting in Medtronic, Inc. v. Barry, No. 2017-1169, 2018 U.S. App. LEXIS 15667 (Fed. Cir. June 11, 2018). Under United States patent law, 35 U.S.C. § 102(a) makes clear that information “described in a printed publication” prior to the effective filing date of the claimed invention is available as prior art when determining the patentability of the claimed invention. 35 U.S.C. § 102(a)(1) (2012) (note that while Medtronic, Inc. analyzes a prior version of the statute (pre-AIA 35 U.S.C. § 102(b)), the current statute recites the same language, and thus the same analysis applies). Examples of printed publications include published books and newspaper articles, as well as electronic publications, such as online databases or Internet publications. See, e.g., Suffolk Tech v. AOL and Google, 752 F.3d 1358 (Fed. Cir. 2014).
Though not publically available in the same way as books in a library, distributed materials can nonetheless qualify as prior art “printed publications” under 35 U.S.C. § 102(b). See, e.g., Medtronic, Inc., 2018 U.S. App. LEXIS 15667, at *22. Whether a reference is a prior art “printed publication” turns on the “public accessibility” of the material. Id. at *21-23. More specifically, a reference is publicly accessible if it was “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.” Id. at *22 (quoting Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016)). For references stored in a library, merely being indexed or cataloged will generally suffice. See id. at *23.
The facts of Medtronic, Inc., however, present a different issue—how to evaluate the “public accessibility” of materials distributed or displayed to a relatively small group of people for a limited purpose, such as a conference. Id. at *23-24. In Medtronic, Inc., the Federal Circuit vacated the Patent Trial and Appeal Board’s “printed publication” determination, explaining that the Board failed to consider all of the relevant factors. Id. at *26-29. Among them, the expectations of the people who shared or received the material weighed heavily in the court’s analysis. Id. More specifically, the court emphasized how an agreement—or implicit understanding—that the materials should remain confidential generally weighs against “printed publication” status. See id.
Medtronic makes tools for spinal surgery. Id. at *2. When a spinal surgeon asserted that some of those tools infringed his patents, Medtronic challenged the validity of the asserted patents in an inter partes review proceeding. Id. Medtronic argued that they were invalid based on a combination of prior art references including a video and set of slides that were presented and distributed to spinal surgeons at multiple conferences. Id. at *9, 19. Critical to the invalidity determination, the Board found that these distributed materials did not qualify as “printed publications.” Id. at *19-20. Deciding in the patent holder’s favor, the Board held that the remaining references failed to render any claims invalid. Id. at *15-16.
When vacating the Board’s “printed publication” determination, the Federal Circuit explained that it should be a “case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. at *22 (quoting In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). The relevant factors include:
(1) “the length of time the display was exhibited,” (2) “the expertise of the target audience” (to determine how easily those who viewed the material could retain the information), (3) “the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied,” and (4) “the simplicity or ease with which the material displayed could have been copied.”
Id. at *25-26 (quoting In re Klopfenstein, 380 F.3d at 1350).
The court mainly focused on the third factor—expectations of confidentiality—when describing deficiencies in the Board’s analysis. Id. at *25-30. For example, the court found that the Board failed to address a “potentially-critical difference” between three conferences at which the video and slides were distributed. Id. at *27. While one conference permitted only members of an exclusive medical study group to attend, the other two allowed non-member surgeons. Id. The Board concluded that the materials at the study group’s conference were not “printed publications,” but the court found that the Board failed to consider whether the presence of non-members at the other conferences changed that result. Id.
The Board’s analysis of the members-only conference was also lacking, the Federal Circuit concluded. Id. at *27-28. Instead of addressing the member’s expectations of confidentiality, it focused on the relatively exclusive nature of the group’s membership. Id. Each member had to be voted into the group by its executive board based on their qualifications and research. Id. at *27. But the group’s exclusivity was only one of several relevant considerations in determining the public availability of the materials. Id. Focusing again on the third factor, the court explained that the Board should have considered the purpose of the meeting and whether the members had agreed or were expected to keep the materials confidential. See id. at *28.
As further clarification of the third factor, the court discussed Cordis Corp. v. Boston Scientific Corp, 561 F.3d 1319 (Fed. Cir. 2009), which illustrates how the party’s expectations can be critical—and that the absence of a legal obligation of confidentiality is not necessarily controlling. Id. at *24-25 (citing Cordis Corp., 516 F.3d at 1335). In Cordis Corp., a doctor gave his research papers to colleagues at his university and hospital. 516 F.3d at 1333-35. Finding that the papers were not “printed publications,” the court explained that “academic norms gave rise to an expectation that the disclosures would remain confidential.” Id. at 1334. The doctor also gave his papers to two companies in an attempt to commercialize the technology. Id. This also fell short of making the papers “printed publications,” even though the companies were under no legal duty to keep the papers confidential. Id. Instead, the court focused on the doctor’s expectations that they be kept secret. Id. “The mere fact that there was no legal obligation of confidentiality,” the court explained, “was insufficient by itself to show that the doctor’s expectation of confidentiality was unreasonable.” Id. at 1335.
In sum, Medtronic, Inc. shows that the prior art category of “printed publication” under § 102 may sometimes exclude materials that were distributed with reasonable expectations of confidentiality. That determination, however, requires a fact-specific analysis of all relevant factors to evaluate the public accessibility of the material.