908 F.3d 690
Fed. Cir.2018Background
- Contour owns U.S. Patents Nos. 8,890,954 and 8,896,694 claiming wearable/POV action-sport cameras with wireless viewfinder/control and GPS features; critical date is Sept. 13, 2009.
- GoPro petitioned for IPR of those patents in 2015, relying on a 2009 GoPro sales catalog (the GoPro Catalog) as prior art; the PTAB instituted IPRs based on that catalog.
- GoPro submitted Damon Jones’s declarations and corroborating exhibits showing GoPro displayed and distributed the catalog at the Tucker Rocky Dealer Show (July 2009), attended by ~150 vendors and ~1,000 attendees, and that the catalog was also available via website, direct mail, and email.
- Contour argued the catalog was not a "printed publication" under pre‑AIA 35 U.S.C. § 102(b), submitting evidence that Tucker Rocky is a dealer/wholesale show not open to the general public.
- The PTAB found the catalog was not a printed publication (insufficient public accessibility) and therefore held GoPro failed to prove the asserted claims obvious; GoPro appealed.
- The Federal Circuit reviewed de novo the legal question and for substantial evidence the factual findings, concluded the catalog was publicly accessible as a printed publication, vacated and remanded for the Board to consider obviousness on the merits.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the GoPro Catalog is a prior-art "printed publication" under § 102(b) | GoPro: catalog was publicly disseminated at the Tucker Rocky Dealer Show and via website/mail; accessible to interested persons exercising reasonable diligence | Contour: dealer show was closed to public; materials were directed to dealers/wholesalers, so not publicly accessible | Catalog is a printed publication; distribution at the dealer show (no restrictions, large attendance, relevance to POV cameras) satisfies public-accessibility standard |
| Whether PTAB properly weighed target-audience/expertise evidence as dispositive | GoPro: target audience is only one factor; trade-show context and dissemination support accessibility | Contour: expertise/closed nature of show means ordinary-skilled artisans would not be expected to be there | Court: audience expertise not dispositive; other factors (nature of event, lack of restrictions, intended dissemination) support accessibility |
| Whether PTAB’s factual findings are supported by substantial evidence | GoPro: testimony and corroborating exhibits were undisputed and credible | Contour: offered website screenshots suggesting dealer-only nature of show | Court: PTAB credited GoPro’s evidence but erred in legal application; undisputed record compels publication as matter of law |
| Remedy | GoPro: vacate and remand for merits consideration if catalog is prior art | Contour: affirm PTAB and reject obviousness grounds | Court: vacated PTAB’s final written decisions and remanded for consideration of obviousness with the catalog treated as prior art |
Key Cases Cited
- In re Lister, 583 F.3d 1307 (Fed. Cir.) (printed-publication question: legal conclusion based on factual findings)
- In re Klopfenstein, 380 F.3d 1345 (Fed. Cir.) (printed-publication legal review is de novo)
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir.) (public accessibility standard for printed publications)
- Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347 (Fed. Cir.) (even obscure documents can be prior art if accessible)
- In re Hall, 781 F.2d 897 (Fed. Cir.) (thesis in university library held sufficiently accessible)
- Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir.) (accessibility concerns whether interested persons could obtain information)
- Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340 (Fed. Cir.) (quoted public-accessibility standard)
- Medtronic v. Barry, 891 F.3d 1368 (Fed. Cir.) (expertise of target audience is a factor but not dispositive)
- In re Lister, 583 F.3d 1307 (Fed. Cir.) (remand appropriate when printed-publication determination changes obviousness analysis)