Efforts by developing countries to prevent the misappropriation of genetic resources and traditional knowledge have thus far been fruitless at the World Trade Organization. In particular, discussion on the relationship between the rules of the Nagoya P…Continue Reading ...
The heads of national telecommunications and technology regulatory authorities are gathering next month at the International Telecommunication Union to address new technologies. Not surprisingly, artificial intelligence and data hold centre stage in th…Continue Reading ...
Recently, Denmark-based footwear maker ECCO filed a suit alleging claims of patent infringement against Manhattan Beach, CA-based shoemaker Skechers. The suit, filed in the federal district for Delaware, asserts a series of patents owned by the Danish shoemaker which cover aspects of golf shoes which have been commercially successful for ECCO in recent years. According to ECCO’s complaint, the alleged claims of infringement by Skechers involve the particular cleat arrangement as well as the…
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By Donald Zuhn — Earlier this year, the National Venture Capital Association (NVCA), a trade association representing the U.S. venture capital industry, released the results of its Pitchbook NVCA Venture Monitor report on venture funding for the first…Continue Reading ...
O “acesso aos recursos genéticos” e a “participação justa e equitativa dos benefícios provenientes de sua utilização” vêm aturdindo delegados e delegações das 13 Conferências das Partes da Convenção das Nações Unidas sobre Diversidade Biológica, que entrou em vigor no ano de 1993. A expressão entre aspas conhecida pela sigla em inglês “ABS” é o terceiro objetivo do Convênio e se encontra entrelaçada pelos dois primeiros objetivos que são a conservação e o uso sustentável. Apesar de 25 anos de esforços e de uma bioeconomia de quase um trilhão de dólares, são muito poucos os contratos celebrados. Desses poucos, os benefícios monetários são tão baixos que as partes contratantes relutam em revelá-los. A “Lei brasileira de ABS” de 2015, que entrou em vigor no dia 6 de novembro de 2017 permite, por exemplo, a obtenção de royalties sobre vendas líquidas tão baixos que isso implica a celebração de contratos pela bagatela de uma décima parte de um por cento. Citando as palavras de um jurista erudito, os Usuários pagam “uma miséria pela biodiversidade”.Continue Reading ...
$$ This makes it possible to make the assembly a little lower than would otherwise be possible. / これは、別のやり方に比べて、組立体を少し低くすることを可能にする。(USP8146835)
$$ Particulates in a sample are far less likely to block the bore of the device when compared with capillary devices. / サンプル中の微粒子が器具の内孔を防ぐ可能性は、毛細管器具に比べて、かなり低い。(USP8092394)
$$ The handle can be substantially stronger than prior art handles, which often consist only of thin adhesive coated films. / しはしば接着剤を被覆した薄いフィルムだけからなる先行技術のハンドルに比べて、このハンドルは実質的に強くすることができる。(USP5968000)
$$ Comparison with Examples 5-8 show that these polymers produce a lower solution viscosity than linear polymers with similar Mw. / 例５～８と比較して、これらのポリマーは、同様のＭｗを有する線状ポリマーと比べて、より低い溶液粘度を与えることを示す。(USPA03013822)
$$ Reaction vessel configurations in which the pressure drop is reduced compared to simple axial flow reactors are known. / 単純な軸流反応器と比べて圧力降下が低減された反応器の構成は知られている。(USP8056205)
$$ Referring to FIG. 8, the sensitivity of embodiments of the present invention has been found to be very high compared with known, unmodulated apparatus. / 図８を参照すれば、本発明の実施例の感度は、既知の変調されていない装置と比べて、非常に高いことが判明した。(USP7652266)
$$ Such an electro-active device can provide a large displacement compared to known devices. / そのような電気活性デバイスは、知られているデバイスに比べて大きな変位を提供することができる。(USP6833656)
$$ The invention provides in effect a high frequency modem having very low noise emissions, compared with comparable known designs. / 本発明は、実際、周知の同等な設計と比べて、ノイズ放出が極めて低い高周波モデムを提供するものである。(USP6473469)
$$ Thus it can be seen that the use of the chock insert substantially improves the fatigue life of ropes passing through the chock insert in comparison to ropes passing through both finished and unfinished chocks. / 従って、チョックインサートの使用は、平滑処理されたチョック（ａ ｆｉｎｉｓｈｅｄ ｃｈｏｃｋ）および荒削りのチョックの双方を通過するロープに比べて、チョックインサートを通過するロープの疲労寿命を実質的に向上させることが分かる。(USP8985045)
$$ Sol-gel formed fibres tend to have a lower (but not zero) shot content in comparison with melt formed fibres. / ゾル－ゲル形成繊維が、溶融形成繊維と比べて、より低い（しかし、０でない）ショット含量を持つ傾向にある。(USP8163377)
$$ Consequently, the cost per measurement may advantageously be reduced by comparison with prior art techniques. / したがって、従来の方法に比べて、測定あたりのコストを有利に低減することができる。(USP8152978)
$$ The first-mentioned passageway may provide a path for fluid which is restricted relative to the further passageway. / 最初に述べた通路は、更なる通路と比べて制限された流体の経路を提供してもよい。(USP8863641)
$$ Suitably, the plane of rotation of the second counter wheel is slightly raised relative to that of the first counter wheel. / 適切には、第2の計数ホイールの軸直角平面は、第1の計数ホイールに比べて僅かに高くされている。(USP8245906)
$$ In contrast to the second embodiment of clip, the aspect ratio of the sixth embodiment of clip is somewhat different. / 第2の実施形態のクリップと比べて、第6の実施形態のクリップのアスペクト比はいくらか異なる。(USP8287559): contrast
$$ Such advantages may include an appreciable cost reduction over known silicon or germanium devices. / このような利点には、既知のシリコンまたはゲルマニウムデバイスに比べて明らかなコスト減少が含まれることもある。(USP8062743): over
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The Federal Circuit heard oral argument in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals last week. The oral argument focuses on whether tribal sovereign immunity applies to IPR proceedings. The panel consists of Judges Dyk, Moore, and Reyna. You can listen to the oral argument here: I will add some sound bites in the future, if time […]Continue Reading ...
Those interested in the patent system have long complained of patent thickets as a barrier to efficient production of new products and services. The more patents in an area, the argument goes, the harder it is to enter. There are several studies that a…Continue Reading ...
While the subject matter of the speech was similar, this speech by Director Iancu was different. It was much more direct and forceful than any of his previous speeches. Iancu asked how inventors are supposed to know where to focus energy and effort wit…Continue Reading ...
1. On Sufficient Description, Norman Siebrasse has published a post titled Compound Interest is Here to Stay. The post provides a detailed discussion of a recent Federal Court decision, Grenke v. DNOW Canada ULC, which (in addition to awarding compound interest, as per the the title of the post) addresses the calculation of lost profits and reasonable royalties, and denies a request for punitive damages. Highly recommended.2. On the EPLaw Blog, Pierre Véron has published a post titled FR – Novartis v. Teva / Valsartan – €13,000,000 advance on damages, discussing a recent case in which the Tribunal de grande instance de Paris awarded a preliminary injunction and €13,000,000 as an advance on damages. M .Véron notes that “[t]his is probably the highest amount ever granted by a French court as an advance payment on damages in a patent infringement case,” and provides a copy of the decision (in French) here. Also on the EPLaw Blog recently, Olivia Henry published a post titled UK – Edwards Lifesciences v. Boston Scientific Scimed, about an English case staying an injunction, which also was recently discussed on IPKat and on this blog here.3. On the IAM Blog, Timothy Au has published a post titled Fear about massive PAE litigation abuses in Europe is unfounded, new report concludes, discussing a report authored by Igor Nikolic and published by the 4iP Council titled Are PAEs a Threat to Europe? The abstract of the report itself reads as follows:
Patent Assertion Entities are often negatively portrayed as harmful “patent trolls” that engage in speculative and abusive patent litigation against manufacturing companies. Although mass PAE litigation has mainly been US phenomenon, a recent study indicated that PAEs are on the rise in Europe and a number of changes to the European patent and litigation system have been recommended. This paper provides a different perspective on PAEs. It will first show that not all PAEs engage in harmful activities and that most are in the legitimate business of patent licensing. Further, Europe has in place different patent and litigation incentives than the US, which effectively guard against any abusive patent litigation. Finally, the available evidence does not in fact show the presence of mass and harmful PAE litigation in Europe.4. On Patently-O, Dennis Crouch published a post on Huang v. Huawei, a nonprecential opinion handed down by the Federal Circuit last week affirming a grant of attorneys’ fees against a pro se litigant. This morning, by contrast, the Federal Circuit published a precedential opinion affirming a judgment denying attorneys’ fees in Stone Basket Innovations, LLC v. Cook Med. LLC. The opinion is fairly fact-specific, but basically holds that the district court did not abuse its discretion in denying fees in a case in which the patentee voluntarily dismissed its suit following institution of an IPR, and requested entry of an adverse judgment before the PTAB after the IPR was instituted.Continue Reading ...
In Medtronic Inc. v. Mark Barry, the PTAB confirmed the patentability of some of Barry’s patented back-straightening claims found in U.S. Patent Nos. 7,670,358 and 7,776,072. The saving-grace for Barry was a PTAB ruling that a set of Videos and Slides distributed by Medtronic did not count as prior art “printed publications” because they were not sufficiently publicly accessible prior to Barry’s application filing. On appeal, however, the Federal Circuit has vacated the lower tribunal opinion — holding that the Board did not consider all the relevant factors in its determination.
Section 102 of the patent act establishes “printed publications” as a form of prior art.
Printed: Whether a publication is “printed” has been broadly applied to allow widely for fixed expressions – including recorded video and powerpoint slides. MPEP 2128 (R-08.2017).
Publication: At issue in this case is the “publication” requirement — which has been interpreted as a public circulation requirement. That said, there is no requirement that the document be circulated to the public at large. Rather, courts have held that circulation at a relevant scientific conference can be sufficient so long as there is no confidentiality requirement.Continue Reading ...
The CAFC noted: We agree with the parties that remand is necessaryand appropriate in light of SAS and Polaris.Continue Reading ...
The case concerned attorneys fees under 285, which were denied in this case:
Appellee Stone Basket Innovations, LLC (“Stone”)
sued Appellant Cook Medical LLC (“Cook”) in the U.S.
District Court for the Southern District of Indiana (“District
Court”), alleging infringement of U.S. Patent
No. 6,551,327 (“the ’327 patent”). Following a dismissal
with prejudice, see Stone Basket Innovations, LLC v. Cook
Med. LLC (Stone Basket I), No. 1:16-cv-00858-LJM-TAB
(S.D. Ind. Jan. 11, 2017) (J.A. 1157), Cook filed, inter
alia, a motion for attorney fees pursuant to 35 U.S.C.
§ 285 (2012) (“the § 285 Motion”). The District Court
issued an order denying the § 285 Motion. Stone Basket
Innovations, LLC v. Cook Med. LLC (Stone Basket II), No.
1:16-cv-00858-LJM-TAB, 2017 WL 2655612, at *1 (S.D.
Ind. June 20, 2017).
Cook appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1) (2012). We affirm.
This appeal involves two main issues, namely, whether
the District Court erred in its assessment of: (1) the
substantive strength of Stone’s litigating position, and
(2) the alleged pattern of vexatious litigation by Stone.
We address these issues in turn
Deference to the examiner is mentioned:
Moreover, Leslie is listed on the face of the ’327 patent,
see ’327 patent, References Cited, and when prior art
“is listed on the face” of a patent, “the examiner is presumed
to have considered it,” Shire LLC v. Amneal
Pharm., LLC, 802 F.3d 1301, 1307 (Fed. Cir. 2015). We
have explained that, where a party only relies on prior art
considered by an examiner in its invalidity contentions,
that party has the burden to “overcome[e] the deference
that is due to a qualified government agency presumed to
have properly done its job, which includes one or more
examiners who are assumed to have some expertise in
interpreting the references and . . . whose duty it is to
issue only valid patents.” PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (internal
quotation marks and citation omitted). Having been
issued a valid patent, Stone was entitled to a presumption
of good faith in asserting its patent rights against Cook in
the form of a suit for infringement. See Checkpoint Sys.,
Inc. v. All-Tag Sec. S.A., 858 F.3d 1371, 1376 (Fed. Cir.
2017) (stating there is a “presumption that an assertion of
infringement of a duly granted patent is made in good
faith” (internal quotation marks and citation omitted)).
Cook’s invalidity contentions, based on prior art already
considered by the Examiner and with no further explanation,
do not make the substantive strength of Stone’s
As to inventor testimony:
Moreover, contrary to Cook’s argument, an inventor’s
testimony that “there is nothing novel about [the sheath
movement],” J.A. 1510, taken alone, neither “establishe[s]
the invalidity of the patent on obviousness grounds” nor
constitutes a “material false statement to the [US]PTO,”
Appellant’s Br. 27, 28. A post-issuance statement regarding
a single element of a claimed invention does not
establish invalidity because “[w]e must consider the
subject matter sought to be patented taken as a whole.”
Graham v. John Deere Co., 383 U.S. 1, 32 (1966). During
prosecution, the USPTO found that the inventor’s
amendment adding the “handle portion comprising a
sheath movement element, . . . as proposed, would overcome
the rejection.” J.A. 1446. Indeed, duly issued
patents are presumed valid. See 35 U.S.C. § 282(a);
Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011).
It was not necessarily unreasonable for Stone to continue
to rely on the ’327 patent’s presumption of validity despite
the ’327 patent’s inventor testimony. See Q-Pharma, Inc.
v. Andrew Jergens Co., 360 F.3d 1295, 1303 (Fed. Cir.
2004) (concluding, in an appeal from a denial of a fee
award, that a party’s decision to proceed with a lawsuit
was not frivolous “in light of the statutory presumption of
As to litigation conduct:
The District Court was well within its discretion to
factor in Cook’s litigation conduct, because “the conduct of
the parties is a relevant factor under Octane’s totality-ofthe-circumstances
inquiry, including the conduct of the
movant.” Gaymar Indus., Inc. v. Cincinnati Sub-Zero
Prods., Inc., 790 F.3d 1369, 1373 (Fed. Cir. 2015) (footnote
omitted) (considering conduct of the movant in assessing
exceptionality). Such conduct includes Cook’s failure to
send any communication to Stone that highlighted and
set out with precision the specific invalidity argument on
which Cook now relies for its assertion that Stone should
have known its conduct was “clearly unreasonable,”
Appellant’s Br. 17, or “objectively baseless,” id. at 25, so
as to merit an award of attorney fees.
Further, Cook’s failure to provide early, focused, and
supported notice of its belief that it was being subjected to
exceptional litigation behavior further supports the
District Court’s determination that Stone’s litigating
position did not “stand out” from others. Octane, 134 S.
Ct. at 1756. Absent any evidence that Stone’s litigating
position was frivolous when filed or at any point before it
filed for dismissal, we are not persuaded the District
Court abused its discretion in determining Stone’s case
did not meet the standard for an award of attorney fees.
Cf. Nat’l Oilwell Varco, L.P. v. Omron Oilfield & Marine,
Inc., 676 F. App’x 967, 973 (Fed. Cir. 2017) (affirming
award of attorney fees where a party was “on notice” of its
potentially frivolous litigating position based on information
provided by the opposing party, yet took no action
to remedy its position).
Moreover, a “party cannot simply hide under a rock,
quietly documenting all the ways it’s been wronged, so
that it can march out its ‘parade of horribles’ after all is
said and done.” Aten Int’l Co. v. Uniclass Tech., No. CV
15-04424-AG (AJWx), slip op. at 5 (C.D. Cal. Mar. 30,
2018). We find this reasoning both persuasive and appli-
cable to this case. Cook waited until October 2016, nearly
a year after service of its invalidity contentions, and nine
months after the inventor’s statements regarding the
sheath’s novelty, before informing Stone that, if Stone
refused to drop its case, “Cook intend[ed] to file . . . a
motion for attorneys’ fees against [Stone], its principals
and its attorneys.” J.A. 1717. During oral argument,
counsel for Cook could not explain why it did not make its
assertion of frivolousness of the claims known to Stone
sooner. See Oral Arg. at 11:37–12:19, http://
2330.mp3 (Q: “That [October 2016] email is . . . the kind
of communication I am talking about, that is, it
says . . . that if you don’t accept our settlement, then [we
will file for attorney fees].” A: “I recognize that . . . .”
Q: “It’s just that [the September 2016 letter] came very
late, . . . and the proceedings ended . . . six weeks later.”
A: “Yes . . . .” Q: “Why didn’t you send something like
that [September 2016 settlement email] before?” A: “I
didn’t think it would produce the result we were likely to
see . . . .” (emphasis added)).
We are further unpersuaded by Cook’s counterargument
that this case is similar to Rothschild, see Appellant’s
Br. 27 (citing 858 F.3d at 1388), in which we
reversed a district court’s denial of a § 285 motion because
the district court failed to consider plaintiff’s “willful
ignorance of the prior art” given counsel for plaintiff
admitted that counsel had “not conducted an analysis of
any of the prior art asserted in [the cross-motion] to form
a belief as to whether that prior art would invalidate” the
patent. Rothschild, 858 F.3d at 1388. In Rothschild, the
defendant also provided notice that the patent was invalid
under 35 U.S.C. §§ 101 and 102, and filed a motion for
judgment on the pleadings. See id. at 1385–86. The
defendant further served plaintiff with a Rule 11 letter
and appended both a draft Rule 11(b) motion and copies of
anticipatory prior art. Id. at 1386. Here, by contrast,
Cook failed to file any Rule 11 motion or motions for
summary judgment, and has not set forth any concrete
evidence that the District Court failed to consider Stone’s
evaluation of its case in light of the evidence of record.
Note footnote 2:
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While we affirm the District Court’s ultimate exceptionality
determination, which considered evidence
that Messrs. Mitry and Salmon are in the business of
forming shell entities to extract nuisance settlements, see
Stone Basket II, 2017 WL 2655612, at *6 & n.3, we note
that Messrs. Mitry and Salmon appear to be patent
attorneys who have been authorized to practice law, see
J.A. 60; see also Oral Arg. at 19:05–11 (confirming the
same by Stone’s counsel). Alternative means exist for
punishing activities by licensed attorneys that might
demonstrate unethical conduct. See Oral Arg. at 33:01–18
(agreeing, by counsel, that “there are plenty of remedies
that are available” if a party has been subject to improper
By Dennis Crouch
The chart below is a follow-up my prior post involving teams of inventors. The chart shows the average number of inventors per utility patent. For patents issued in first five-months of 2018, about 5% have 7 or more inventors.
U.S. Patent No. 9,971,713 (GlobalFoundaries) is an example of a high-inventor-count patent with 60 listed inventors. The patent is now owned by GlobalFoundaries (CAYMAN ISLANDS) but originated from work by IBM and a Department of Energy grant.Continue Reading ...
From the beginning of the decision:
This is a consolidated appeal from two related decisions
of the U.S. Patent and Trademark Office’s Patent
Trial and Appeals Board (Board) in inter partes review
(IPR) proceedings. The Board concluded that the petitioner,
Medtronic, Inc., had not proven that the challenged
patent claims are unpatentable.
We affirm-in-part and vacate-in-part. Substantial evidence
supports the Board’s determination that the challenged
claims would not have been obvious over two
references: 1) U.S. Patent Application No. 2005/0245928
(the ’928 Application); and (2) a book chapter which
appears in Masters Techniques in Orthopaedic Surgery:
The Spine (2d ed.) (MTOS). However, we vacate the
Board’s conclusion that certain other references, i.e., a
video entitled “Thoracic Pedicle Screws for Idiopathic
Scoliosis” and slides entitled “Free Hand Thoracic Screw
Placement and Clinical Use in Scoliosis and Kyphosis
Surgery” (Video and Slides), were not prior art because
the Board did not fully consider all the factors for determining
whether the Video and Slides were publicly accessible.
We thus remand for further proceedings.
The art in question:
Medtronic distributed a video demonstration and a related
slide presentation to spinal surgeons at various
industry meetings and conferences in 2003. J.A. 1719–57.
These video and slide sets depict derotation surgeries that
use pedicle screws and other instrumentation to correct
scoliosis. J.A. 1467–72. The Video consists of a narrated
derotation surgery performed in 2001 by Dr. Lenke, who
testified as Medtronic’s expert in this case. J.A. 1467–70.
The Slides include information about the use of pedicle
screws in derotation surgeries, including numerous pictures
from surgeries performed and x-rays of preoperative
and post-operative spines. J.A. 1735–49. The
Board found that the Video and Slides, although presented
at three different meetings in 2003, were not publicly
accessible and therefore were not “printed publications,”
in accordance with 35 U.S.C. § 102.2 As a result, the
Board, in its final decisions, refused to consider these
materials as prior art in its evaluation of the ’358 and ’072
A CD containing the Video was distributed at three
separate programs in 2003: (1) a meeting of the “Spinal
Deformity Study Group” (SDSG) in Scottsdale, Arizona,
on April 10–13, 2003 (the Scottsdale program); (2) the
Advanced Concepts in Spinal Deformity Surgery meeting
in Colorado Springs, Colorado, on May 18–19, 2003 (the
Colorado Springs program); and (3) the Spinal Deformity
Study Symposium meeting in St. Louis, Missouri, on
November 13–15, 2003 (the St. Louis program). J.A.
2651–52, 2667–67. Binders containing relevant portions
of the Slides were also distributed at the Colorado Springs
and St. Louis programs. J.A. 2667, 4633.
The earliest of the three 2003 programs, the Scottsdale
program, was limited to SDSG members. J.A. 5904–
09. Medtronic’s witness, David Poley, described SDSG as
“a gathering of experts within the field of spinal deformity.”
J.A. 5904. About 20 SDSG members attended the
Scottsdale program. J.A. 2651. The other two programs
were open to other surgeons. J.A. 2668. Medtronic sponsored
these programs as medical education courses. J.A.
2666. Approximately 20 and 55 surgeons attended the
Colorado Springs and St. Louis programs, respectively.
J.A. 2667–68, 4633.
Medtronic argues that the Board committed legal error
in concluding that the Video and Slides were not
sufficiently accessible to the public. According to Medtronic,
the Board’s sole basis for this conclusion rested on
its faulty assumption that the materials were distributed
only to members of the SDSG. See J.A. 12–13. Medtronic
points out two problems with this assumption. First, it
argues that the Board improperly ignored evidence that
the Video and Slides were distributed at programs that
were not limited to SDSG members. Second, Medtronic
contends that, even if the assumption were correct, a
reference need only be accessible to the “interested public”
to satisfy the public accessibility requirement, and that,
members of the SDSG fall squarely within that category.
According to Barry, the Board correctly found that
“members of the Spinal Deformity Study Group, who
received the Video and Slides, were experts voted into
membership by an executive board based on their qualifications
and ability to conduct research.” J.A. 12. Because
the slides were only available to experts who are part of a
group limited to members only, and not those of ordinary
skill, Barry argues that the Video and Slides were not
publicly accessible to ordinarily skilled artisans.
Whether a reference qualifies as a “printed publication”
is a legal conclusion based on underlying factual
determinations. Suffolk Techs., LLC v. AOL Inc., 752
F.3d 1358, 1364 (Fed. Cir. 2014) (citation omitted).
Note footnote 2:
Because the claims at issue in this case have effective
filing dates before March 16, 2013, we apply the
pre-AIA § 102
The CAFC observed:
The determination of whether a document is a “printed
publication” under 35 U.S.C. § 102(b) “involves a caseby-case
inquiry into the facts and circumstances surrounding
the reference’s disclosure to members of the
public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
2004). “Because there are many ways in which a reference
may be disseminated to the interested public, ‘public
accessibility’ has been called the touchstone in determining
whether a reference constitutes a ‘printed publication’
bar under 35 U.S.C. § 102(b).” Blue Calypso, 815 F.3d at
1348 (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir.
1986)). “A reference will be considered publicly accessible
if it was ‘disseminated or otherwise made available to the
extent that persons interested and ordinarily skilled in
the subject matter or art exercising reasonable diligence
can locate it.’” Id. (quoting Kyocera Wireless Corp. v. Int’l
Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).
The issue of a reference’s public accessibility often
arises in the context of references stored in libraries. In
such cases, we generally inquire whether the reference
was sufficiently indexed or cataloged. Id. Here, we
encounter a different question: whether the distribution of
certain materials to groups of people at one or more
meetings renders such materials printed publications
under § 102(b). We have stated that a printed publication
“need not be easily searchable after publication if it was
sufficiently disseminated at the time of its publication.”
Suffolk Techs., 752 F.3d at 1365 (concluding that an
electronic newsgroup post was sufficiently disseminated
where the newsgroup was populated by those of ordinary
skill in the art and “dialogue with the intended audience
was the entire purpose of the newsgroup postings,” even
though the post was non-indexed and non-searchable).
The parties here do not allege that the Video and Slides
were stored somewhere for public access after the conferences.
Thus, the question becomes whether such materials
were sufficiently disseminated at the time of their
distribution at the conferences. A survey of previous
cases involving distribution of materials at meetings
provides factors relevant to this case.
For example, in Massachusetts Institute of Technology
v. AB Fortia (MIT), a paper that was orally presented at a
conference to a group of cell culturists interested in the
subject matter was considered a “printed publication.”
774 F.2d 1104, 1109 (Fed. Cir. 1985). In that case, between
50 and 500 persons having ordinary skill in the art
were told of the existence of the paper and informed of its
contents by the oral presentation. Id. at 1109. We took
note that the document itself was disseminated without
restriction to at least six persons. Id. at 1108–09. Thus,
whether the copies were freely distributed to interested
members of the public was a key consideration in our
The CAFC found the Board’s analysis incomplete:
The record does not show that the Board fully considered
all of the relevant factors. As a threshold matter, the
Board did not address the potentially-critical difference
between the SDSG meeting in Arizona and the programs
in Colorado Springs and St. Louis, which were not limited
to members of the SDSG but instead were attended by at
least 75 other surgeons, collectively. J.A. 2668. Also,
Medtronic’s expert, Dr. Lenke, testified that the materials
were distributed without restrictions at the Colorado
Springs and St. Louis programs. J.A. 1467–68, 3002.
Although the Board found that disclosure to a small group
of experts in the members-only SDSG meeting was insufficient
to compel a finding that the Video and Slides were
publicly available, its analysis was silent on the distribution
that occurred in the two non-SDSG programs.
Further, even if the Board were correct in its assumption
that Medtronic only gave the Video and Slides to the
SDSG members, it did not address whether the disclosures
would remain confidential. The Board found that
SDSG members were experts voted into membership by
an executive board based on their qualifications and
research, but the relatively exclusive nature of the SDSG
membership is only one factor in the public accessibility
analysis. It may be relevant, for example, to consider the
purpose of the meetings and to determine whether the
SDSG members were expected to maintain the confidentiality
of received materials or would be permitted to
share or even publicize the insights gained and materials
collected at the meetings. See, e.g., J.A. 4153 (stating that
the materials were distributed at the SDSG meeting
without restriction or obligation of confidentiality).
Accordingly, whether dissemination of the Video andContinue Reading ...
Slides to a set of supremely-skilled experts in a technical
field precludes finding such materials to be printed publications
warrants further development in the record. The
expertise of the target audience can be a factor in determining
public accessibility. See In re Klopfenstein, 380
F.3d at 1350–51 (“The expertise of the intended audience
can help determine how easily those who viewed it could
retain the displayed material.”). But this factor alone is
not dispositive of the inquiry. Distributing materials to a
group of experts, does not, without further basis, render
those materials publicly accessible or inaccessible, simply
by virtue of the relative expertise of the recipients. The
nature of those meetings, as well as any restrictions on
public disclosures, expectations of confidentiality, or,
alternatively, expectations of sharing the information
gained, can bear important weight in the overall inquiry.
For these reasons, we vacate the Board’s finding that
the Video and Slides are not printed publications and
remand for further proceedings consistent with this