The Impact of Public Accessibility on “Printed Publications” for Prior-Art Purposes
Understanding the Impact of Public Accessibility on “Printed Publications” for Prior-Art Purposes: Insights from the Federal Circuit’s Recent Weber v. Provisur Opinion
By Doug Meier
Introduction
In patent law, whether a reference constitutes “prior art” is an important question that comes up frequently. There are a few categories of prior art under Section 102(a) of the Patent Act. Specifically, Section 102(a) allows for patenting of an invention unless that 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 of the claimed invention. In this blog post, we look at the Weber v. Provisur decision from the Federal Circuit, which explores the boundaries of when a reference constitutes a “printed publication” as used in Section 102(a) for prior-art purposes.
A “Printed Publication” Requires “Public Accessibility”
The question of whether a reference constitutes a “printed publication” under Section 102(a) turns on whether that reference was “publicly accessible” at the relevant time. So, the natural next question is what constitutes a reference being sufficiently “publicly accessible” to be a “printed publication.” The standard for public accessibility is whether interested members of the relevant public can locate the reference without extraordinary measures — that is, with reasonable diligence. If so, then that reference qualifies as a “printed publication.”
The Weber Ruling
In Weber v. Provisur, the patent owner sued the defendant for infringing two of its patents relating to commercial slicers used to process food. The defendant argued that those patents were invalid over the defendant’s own prior art. More specifically, the defendant used the operating manuals for its own slicers as prior art.
The evidence showed that these operating manuals were distributed to only ten unique customers. The evidence also showed, however, that these operating manuals could be obtained either by purchasing the defendant’s slicer or by requesting the manuals from an employee of the defendant, and that the manuals were shown at trade shows and factory showrooms. So, although very few people actually received the operating manuals, the evidence showed that they nevertheless could have if they had wanted to.
The main point that cut against public accessibility was the fact that the operating manuals were subject to confidentiality restrictions and the fact that they included a copyright notice that stated that they may not be reproduced or transferred in any way. This was an important point because, generally speaking, confidentiality cuts against public accessibility. In other words, if something is kept confidential, then it is not publicly accessible.
In this case, however, the Federal Circuit found that these so-called confidentiality restrictions were insufficient to overcome the evidence that showed that the operating manuals were actually available to the public and, at least in a few cases, did in fact make it into the public’s hands.
The Court held that the evidence showed that the operating manuals were accessible to interested members of the relevant public by reasonable diligence. Thus, the Court prioritized the evidence showing the possibility of obtaining the operating manuals—either through the purchase of the product they accompanied or upon request from the seller—over both the volume of dissemination and the confidentiality restrictions.
Implications and Importance of Specific Evidence
Perhaps the most interesting aspect of this case is the Court’s differentiation between the accessibility of a reference and its actual uptake by the public. The key inquiry appears to be the potential for access, rather than whether it was actually accessed. Additionally, the fact that the Court appeared to give minimal weight to the confidentiality restrictions attached to the operating manuals is worth keeping in mind. Patent lawyers often live by the mantra that confidentiality kills public accessibility; however, this decision makes clear that evidence that shows confidentiality (or lack thereof) is critical.
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