Using a Printed Publication to Attack a Patent? Recent Decisions Underscore Importance of "Public Accessibility" 

Companies preparing to launch a new product should address “freedom to operate” (“FTO”) issues to minimize the risk of an infringement dispute with a patent holder in the relevant field. Companies may also find themselves in patent litigation as either a plaintiff or defendant. A legally-preferred FTO position and litigation defense is that there is no infringement. It is common for parties seeking FTO clearance or defending an infringement action to also establish an invalidity position to address legal uncertainties in how patent claims may be interpreted. Invalidity arguments establish how matter in the public domain either anticipates the claims of a patent or makes them obvious. Matter in the public domain can be other, earlier patents, or published patent applications. Or that matter can be non-patent “printed publications” such as commercial literature and web pages.

Two recent decisions, one by the Patent Trial and Appeal Board (“PTAB”) at the U.S. Patent and Trademark Office and another by the Court of Appeals for the Federal Circuit, reinforce the notion that in order to be relied on to prove invalidity, the non-patent printed publication must be publically accessible.

“Wayback Machine” Evidence Failed to Prove Printed Publications Were Publicly Accessible Before Critical Date.

In First Solar, Inc. v. Rovshan Sade, the PTAB denied First Solar’s attempt to invalidate some claims of U.S. Patent No. 9,057,546 in an inter partes review. First Solar relied primarily on two non-patent literature documents published on the Internet by third parties. The first ----Wattsun -- is a web page describing a dual-axis, azimuth drive solar tracker. The second –RayTracker -- is a document describing the RayTracker GC single-axis solar tracker system. First Solar submitted documentation from the Internet Archive’s Wayback Machine to try to meet its burden to demonstrate both references were publicly accessible before the critical date of the patent. First Solar also submitted affidavits by a person identified as a Record Request Processor at the Internet Archive explaining the Wayback Machine and the format of URLs the Internet Archive assigns to the archived files and their relationship to the date that the file was archived. For the RayTracker reference, First Solar also submitted a declaration by a former employee of First Solar and RayTracker with personal knowledge about the RayTracker document. The former employee stated that RayTracker was available before the critical date.

The PTAB denied the petition, finding that First Solar had failed to meet its burden to prove that Wattsun and RayTracker qualify as “publicly accessible” printed publications. The PTAB was persuaded by the patent owner’s argument that First Solar offered no evidence that Wattsun was indexed in a manner that would allow a person "of ordinary skill in the art," searching for the information, to locate it. The PTAB found insufficient evidence that an interested party exercising reasonable diligence would have located the Wattsun reference. On the RayTracker reference, the PTAB pointed out that supporting evidence actually related to a different version of the cited reference and that the former employee’s testimony was uncorroborated.

Federal Circuit Finds Product Operating Manuals Qualify as Publicly Accessible Printed Publications Despite Confidentiality Restrictions.

In Weber Inc. v. Provisur Techs., Inc., the Federal Circuit reversed the PTAB’s determination that Weber’s operating manuals did not qualify as printed publications. Weber sought to invalidate Provisur’s patent claims in an IPR based in part on some of its commercial food slicer operating manuals. The PTAB concluded that the Weber operating manuals do not qualify as printed publications because they were distributed to just “ten unique customers.” The PTAB also held that the manuals were subject to confidentiality restrictions in their copyright notice and by the standard terms and conditions connected to sales of the slicers. Weber appealed to the Federal Circuit which reversed, noting that Weber’s operating manuals were created for dissemination to the interested public to provide instructions about how to assemble, use, clean, and maintain Weber’s slicer. The Federal Circuit also commented that Weber’s copyright in the manuals does not prevent Weber from making its own manuals publicly accessible.

Takeaways

When non-patent literature is relied upon as a basis to invalidate patent claims, public accessibility of the printed publication may be critical. Accessibility cannot be assumed, even if the publication is found on the internet. Patent owners defending against an invalidity attack should pay close attention to the threshold requirement of public accessibility as an important line of defense. For more information, please contact our Intellectual Property Litigation Practice Group. 

Disclaimer

This client alert is a form of attorney advertising. Hodgson Russ LLP provides this information as a service to its clients and other readers for educational purposes only. Nothing in this client alert should be construed as, or relied upon, as legal advice or as creating a lawyer-client relationship.