The Federal Circuit has recently provided substantial guidance on whether printed publications include documents publicly available via the internet. This article reviews four such cases that illustrate the expansive view that the Federal Circuit applies when deciding whether an online document can qualify as printed publication prior art.
A patent cannot be obtained if the claimed invention was “described in a printed publication . . . before the effective filing date of the claimed invention.”[1] This statutory language and the similar language in pre-AIA 35 U.S.C. § 102 serve as the basis of printed publication jurisprudence.
Printed publication issues have arisen in numerous cases decided at the PTAB since its inception in September 2012. Before the America Invents Act created trials at the PTAB, Federal Circuit decisions addressing printed publication issues were few and far between. In the last three years, however, the Federal Circuit has decided nine printed publication cases—each on appeal from the PTAB.[2] The general trend of these cases has been to expansively interpret “printed publications” to include a broad array of documents. This proliferation of printed publication caselaw has included four Federal Circuit cases in the past three years where the asserted prior art reference was “published” on the internet or through online means.
In general, when deciding whether a document qualifies as a printed publication, courts look to “public accessibility” as the touchstone that determines whether a given reference constitutes a “printed publication.”[3] Documents disseminated or otherwise made available, e.g., in a library or other repository, may be printed publications to the extent that persons interested and ordinary skilled in the art exercising reasonable diligence can locate them.[4] Public accessibility may also be shown by establishing the extent to which the reference was disseminated.[5] Courts evaluate public accessibility based on factors including (1) the “length of time the display was exhibited,” (2) the “expertise of the target audience,” (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.”[6]
Courts determine whether prior art references are printed publications “on a case-by-case basis.”[7] Case-by-case analysis is necessary because the facts surrounding a given reference will be unique, and no bright line rule is possible.[8] Shifting technologies further require case-by-case analysis.[9]
Against this background, the Federal Circuit analyzed four recent cases involving documents alleged to have been published via the internet.
Jazz Pharmaceuticals v. Amneal
In Jazz Pharmaceuticals v. Amneal, the court reiterated that a reference is deemed publicly available if it 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.”[10] The issue was whether background materials prepared by an FDA advisory committee (“Advisory Committee Art” or “ACA materials”) and publicly accessible on an FDA website, could qualify as a prior art printed publication.[11] Notably, the FDA website address had been listed in a Federal Register notice.[12] The Federal Circuit affirmed the PTAB’s holding, which had concluded these documents were publicly accessible and qualified as printed publications.[13]
The court analogized the ACA materials in Jazz Pharmaceuticals to earlier cases where materials had been presented or distributed at conferences.[14] For example, in past cases the court had found that a paper presented orally at a conference attended by 50 to 500 experts qualified as a printed publication because copies were given to the head of the conference and six other people, with no confidentiality restrictions.[15] Likewise, the court had previously found slides presented on a poster board at two scientific meetings to be printed publications even though the slides were neither distributed nor indexed.[16] In contrast, the court had previously found that a paper presented by a medical resident to several physicians, colleagues, and six teachers was not a printed publication because academic norms suggested an expectation that the disclosures would remain confidential.[17] In Jazz Pharmaceuticals, the court evaluated public accessibility factors to concluded that the ACA materials (1) had been broadly disseminated because persons of ordinary skill in the relevant industry receive the Federal Register, (2) were available for two months before the critical date of the patent in suit, and (3) were placed in the public domain with no expectation of confidentiality.[18] The court reiterated that its precedent does not require indexing or searchability if the reference was sufficiently disseminated, but alternatively held that, to the extent indexing or searchability are required, the Federal Register was adequately indexed.[19]
Samsung Electronics v. Infobridge
In Samsung Electronics v. Infobridge Pte. Ltd. the Federal Circuit again evaluated whether documents available via the internet qualified as printed publications. The court vacated and remanded a PTAB decision that had held the documents were not publicly accessible.[20] The reference at issue was a draft standards document, which summarized discussions from a standards-setting meeting of the Joint Collaborative Team on Video Coding (JCT-VC), and which was posted on a JCT-VC website and distributed via a list-serv to members of the JCT-VC and other interested individuals.[21]
The Federal Circuit decided three issues. First, the court affirmed that discussions of the draft standard at the standard-setting meeting did not make the reference publicly available.[22] The draft itself was not created until after the meeting. Second, the court affirmed that posting the draft on the website was not a public disclosure.[23] The court noted that the website lacked any content-based organization. Documents on the website were organized by the city at which the relevant meeting occurred, and then by index number. In short, there was no evidence showing accessibility to individuals outside of the standard setting organization, and the court held that “a work is not publicly accessible if the only people who know how to find it are the ones who created it.”[24] Third, the court considered whether distribution of the draft via the list-serv was a public disclosure. On this issue, the court vacated and remanded to allow the PTAB to decide whether the existence of the list-serv made the reference accessible.[25] The court instructed the PTAB to consider whether the ordinarily skilled artisan, exercising reasonable diligence, would have joined the list-serv; and whether the distribution was subject of any expectation of confidentiality.[26] The court also noted that the PTAB applied the wrong legal standard to the extent it required proof that interested individuals actually accessed the reference via the list-serv.[27]
Valve Corporation v. Ironburg Inventions Ltd.
In Valve Corporation v. Ironburg Inventions Ltd. the Federal Circuit reversed the PTAB, holding that a product review article posted on a website qualified as a printed publication, even though the article was retrieved using the Internet Archive’s “Wayback Machine.”[28] The court noted that the article was originally written at the request of a co-inventor to publicize the patented products.[29] The court reviewed several cases where a publication intended to reach the general public or individuals interested in the commercial and developmental aspects of products, where that publication was considered “public” and “publicly accessible.”[30] The court also noted that patent examiners had readily found the document and identified its publication date through the Internet Archive “Wayback Machine.” The examiner had found the document during a “brief” internet search, and the court concluded that this was proof that the document could be found using reasonable diligence.[31]
Acceleration Bay v. Activision Blizzard
In the only one of these four cases where the Federal Circuit concluded the disputed reference was not publicly available, it held in Acceleration Bay, LLC v. Activision Blizzard, Inc. that a student thesis was not disseminated or accessible.[32] The student thesis had been placed on a server that was indexed only by name, and not by topic, and was not otherwise publicly disseminated.[33] When evaluating whether an article is adequately indexed, the “ultimate question is whether the reference was ‘available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’”[34] The court noted that the server was not indexed in any meaningful way and, further, that an advanced search function on the website was not useful.[35] Furthermore, a test of the search functionality had failed to find the article.
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While guidance from the Federal Circuit regarding whether online resources qualify as printed publications had been sparce, these recent cases shed some light on the issue. These cases highlight the types of facts that will have an impact on analyzing the issue, with fact patterns that maybe be comparable to a particular situation. As summarized above, the Federal Circuit has consistently applied an expansive meaning to “printed publications” for online documents, paper publications, and other types of documents. Practitioners can expect this body of caselaw to continue its rapid expansion, as the printed publication issue arises frequently in PTAB cases and, now, on appeal to the Federal Circuit.
[1] 35 U.S.C. § 102(a)(1); see also 35 U.S.C. § 102(a) (2006) (pre-AIA) (precluding patentability if “the invention was . . . described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent”).
[2] Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir. 2018);
GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir. 2018);
Jazz Pharms., Inc. v. Amneal Pharms., Inc., 895 F.3d 1347 (Fed. Cir. 2018);
Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018);
Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765 (Fed. Cir. 2018);
Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363 (Fed. Cir. 2019);
Telefonaktiebolaget LM Ericsson v. TCL Corp., 941 F.3d 1341 (Fed. Cir. 2019);
Vidstream LLC v. Twitter, Inc., 981 F.3d 1060 (Fed. Cir. 2020);
Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364 (Fed. Cir. 2021).
[3] SRI Int’l Inc., v. Internet Security Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008); In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986).
[4] Compare In re Hall, 781 F.2d at 899 (publication in library is printed publication) with In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) (thesis cataloged only by author’s name was not printed publication).
[5] In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004) (describing dissemination as making knowledge “widespread,” with analogy to a public billboard that is displayed for several months but is neither “distributed” nor “indexed”).
[7] See, e.g., SRI Int’l, 511 F.3d at 1194; In re Klopfenstein, 380 F.3d at 1350.
[8] In re Wyer, 655 F.2d 221, 227 (C.C.P.A. 1981) (“While intent to make public, activity in disseminating information, production by a method allowing production of a large number of copies may aid in determining whether an item may be termed a ‘printed publication,’ they are neither always conclusive nor requisite.”)
[9] The question of whether a reference was physically printed no longer has relevance, as cases have held that a “printed publication” can include microfilm (In re Wyer, 655 F.2d at 223-24) and electronic documents posted on the internet (SRI Int’l, 511 F.3d at 1195).
[10] Jazz Pharms., 895 F.3d at 1355 (citing In re Wyer, 655 F.2d at 226).
[15] Id. at 1356, citing Mass. Inst. of Tech. v. ABFortia, 774 F.2d 1104, 1108–09 (Fed. Cir. 1985).
[16] Id. at 1356–57, citing In re Klopfenstein, 380 F.3d at 1350.
[17] Id. at 1357, citing Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1333–34 (Fed. Cir. 2009).
[18] Id. at 1357–59 (omitting, without comment, the fourth factor discussed supra from In re Klopfenstein).
[20] Samsung Elecs., 929 F.3d at 1374–75.
[22] Id. at 1370 (holding alternatively that the argument had been waived).
[28] Valve Corp., 8 F.4th at 1376.
[30] Id. at 1374 (citing Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014); GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 695 (Fed. Cir. 2018); SRI Int’l, 511 F.3d at 1196).
[32] Acceleration Bay, 908 F.3d at 773.
[34] Id. at 774 (quoting Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012)).
