Federal Circuit Instructs PTAB How to Apply Public Accessibility Standard

| Ben K. ShiromaDaniel Kiang


Before Reyna, Hughes, and Stark.  Appeal from the Patent Trial and Appeal Board.

Summary: Copyright notices in product manuals, which prohibited their reproduction and transfer, did not remove the manuals from the prior art.

Provisur Technologies, Inc. sued Weber, Inc. for infringement of two patents related to food slicers.  Weber petitioned for inter partes review of the patents based on Weber food slicer operating manuals combined with other references.  The Board instituted IPR of the patents.  However, the Board ultimately decided that the manuals were not printed publications because the manuals’ copyright notices and Weber’s terms and conditions for food slicer sales made the manuals confidential.  The Board then held that Weber failed to establish the patents’ invalidity.

The Federal Circuit, inter alia, reversed the Board’s decision on the manuals’ prior art status.  The Federal Circuit explained that public accessibility, necessary for a reference to be a printed publication, depends on “whether interested members of the relevant public could locate the reference by reasonable diligence.”  The Federal Circuit recognized that Weber made the manuals available upon purchase of a food slicer or upon request, as well as at trade shows and Weber’s showrooms.  The Federal Circuit criticized the Board’s “inordinate emphasis” on the manuals’ copyright notice and Weber’s terms and conditions.  The Federal Circuit held that “Weber’s assertion of copyright ownership does not negate its own ability to make the reference publicly accessible” and “the intellectual property rights clause . . . has no dispositive bearing on Weber’s public dissemination of operating manuals.”

Editor: Sean Murray