In Weber, Inc. v. Provisur Techs., Inc., Nos. 2022-1751, 2022-1813 (Fed. Cir. Feb. 8, 2024), the Federal Circuit reversed the Patent Trial and Appeal Board's legal conclusion that Weber's operating manuals were not prior art printed publications based on the public accessibility of the operating manuals.
Background
In response to an infringement case filed by Provisur, Weber filed two inter partes review ("IPR") petitions to invalidate two patents owned by Provisur, based on Weber's operating manuals and additional references, which the Board instituted. Weber, slip op., pp. 2, 6. The two patents (U.S. Patent Nos. 10,639,812 and 10,625,436) relate to high-speed mechanical slicers for slicing and packaging food articles. Id. at p. 2. By applying the framework in Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009), the Board concluded in the IPRs that the operating manuals were not sufficiently publicly accessible to qualify as printed publications under pre-AIA 35 U.S.C. § 102(b) because of the confidentiality restrictions associated with the operating manuals. Weber, slip op., p. 10. Further, even if the operating manuals qualify as printed publications, the claims were not obvious over Weber's asserted prior art. Id. at p. 8. Weber appealed.
Issues
An important issue the court considered on appeal was whether the Board's "printed publication" conclusion was supported by substantial evidence. Additional issues include whether prior art discloses certain claim limitations.
Holdings and Reasoning
The Federal Circuit stated that the legal standards for printed publications as the follows:
The statutory phrase "printed publication" from § 102 has been defined to mean a reference that was "sufficiently accessible to the public interested in the art." The touchstone of whether a reference constitutes a printed publication is public accessibility. The standard for public accessibility is whether interested members of the relevant public could locate the reference by reasonable diligence. Weber, slip op., p. 10 (citations omitted).
The court disagreed with the Board's conclusion that Weber's operating manuals were not publicly accessible and do not qualify as printed publications. Weber, slip op., p. 13. The court faulted the Board's application of Cordis, because "the confidential nature of the monographs and circumstances surrounding disclosure, including academic confidentiality norms in Cordis makes that case readily distinguishable from this case where the purpose of the operating manuals is "'dialogue with the intended audience,' [which] indicates public accessibility." Weber, slip op., pp. 10-11. In Cordis, the monographs "were only distributed to a handful of university and hospital colleagues as well as two companies interested in commercializing the technology" and "academic norms gave rise to an expectation that disclosures will remain confidential" Weber, slip op., p. 10. In stark contrast in this case, "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, as well as guidance for addressing malfunctions that users might encounter." Id. at pp. 10-11. Weber's operating manuals had been made accessible to interested members of the relevant public by reasonable diligence. Id. at. p. 11. The court added that Weber's copyright ownership of the operating manuals does not negate Weber's ability to make the operating manuals publicly accessible. Weber, slip op., p. 13. The court held that "Board's determinations that Weber's operating manuals were not publicly accessible are unsupported by substantial evidence" and reversed the Board's determination that the operating manuals were not printed publications. Id. The court also reversed the Board's determination that the prior art does not disclose certain claim limitations. Id. at p. 18.
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