GoPro, Inc. v. Contour IP Holding, LLC, Appeal Nos. 2017-1894, -1936 (Fed. Cir. Nov. 1, 2018)

In its only precedential decision in the past three weeks, the Federal Circuit denied a petition for rehearing en banc and reissued its panel decision with slightly revised language, leaving intact its July ruling regarding the appropriate standard for a document to qualify as a “printed publication” under pre-AIA 35 U.S.C. §102(b).

In July, the Federal Circuit reviewed challenges to patents relating to action sport video cameras or camcorders configured for remote acquisition control and viewing.  The Federal Circuit’s decision turned on whether a catalog distributed at a trade show counts as prior art—an analysis to which the PTAB took too narrow a view. 

Hundreds of copies of the GoPro sales catalog at issue were distributed at a dealer-only action sports vehicles trade show.  Patent owner Contour IP Holding argued that the catalog was not a printed publication constituting prior art because the trade show was not open to the general public and GoPro presented no evidence showing that the catalog was made available to persons ordinarily skilled in the art.  The appellate court disagreed.  When determining whether a reference is “publicly available,” the Federal Circuit held, the standard is “one of reasonable diligence[] to locate the information by interested members of the relevant public.”

The Federal Circuit chose not to reconsider the panel’s decision, and instead, replaced the July opinion with a modified opinion.

In the modified opinion, the Court added that GoPro met its burden by presenting testimony “that the dealer show was attended by actual and potential dealers, retailers, and customers of POV video cameras,” supporting its conclusion that the catalog “was disseminated with no restrictions and was intended to reach the general public.”  Similarly, the modified opinion noted that “[w]hen direct availability to an ordinary skilled artisan is no longer viewed as dispositive, the undisputed record evidence compels a conclusion that the GoPro Catalog is a printed publication as a matter of law.”  The Court’s modification clarifies that, even if a reference is not directly distributed to persons skilled in the art, it can still count as a publication under pre-AIA 35 U.S.C. §102(b). 

The modified opinion can be found here.