898 F.3d 1170
Fed. Cir.2018Background
- Contour owns U.S. Patents 8,890,954 and 8,896,694 claiming POV action-sports digital cameras with wireless viewfinder/control features; effective critical date: Sept. 13, 2009.
- GoPro petitioned for IPRs challenging many claims of both patents, relying principally on a 2009 GoPro sales catalog (the "GoPro Catalog") as prior art.
- GoPro submitted Damon Jones’s declarations and exhibits showing GoPro displayed and distributed the catalog at the Tucker Rocky dealer trade show (July 2009), which had ~150 vendors and ~1,000 attendees; GoPro also asserted broader distribution (website, direct mail, email).
- The PTAB instituted the IPRs but concluded in final written decisions that the catalog was not a §102(b) printed publication because the dealer show was not open to the general public and GoPro did not show that persons of ordinary skill would have located it.
- The Federal Circuit reviewed the printed-publication issue de novo (with factual findings for substantial-evidence review) and held the Board erred: the catalog was sufficiently publicly accessible given unrestricted distribution at a targeted dealer trade show frequented by the relevant audience.
- The Federal Circuit vacated the Board’s unpatentability rulings and remanded for the Board to consider the catalog as prior art and address GoPro’s obviousness grounds on the merits.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the GoPro Catalog was a §102(b) printed publication (publicly accessible) | Jones’s declarations and exhibits prove the catalog was displayed and freely distributed at the July 2009 Tucker Rocky dealer show and more broadly, so it was publicly accessible to those exercising reasonable diligence | Dealer show was closed to dealers/wholesalers, not public; no evidence that persons of ordinary skill attended, so catalog not publicly accessible | Catalog is a printed publication: distribution at the dealer show (targeted to dealers likely interested in POV cameras) sufficed to satisfy public-accessibility standard; vacated and remanded |
Key Cases Cited
- In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) (printed-publication is legal question with underlying factual findings reviewed for substantial evidence)
- In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (printed-publication question reviewed de novo)
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016) (accessibility inquiry and broad interpretation of §102)
- In re Hall, 781 F.2d 897 (Fed. Cir. 1986) (single cataloged thesis in a library can be sufficiently accessible)
- Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988) (accessibility shown by ability of interested public to obtain information; actual receipt not required)
- Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340 (Fed. Cir. 2008) (public accessibility standard for printed publications)
- Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir. 2018) (expertise of audience is a factor but not dispositive in public-accessibility analysis)