By: David Anderson and Dave Maiorana

On July 27, 2018, the Federal Circuit reversed the PTAB’s finding that Petitioner GoPro, Inc. failed to establish the public availability of an alleged prior art printed publication.  GoPro, Inc. v. Contour IP Holding LLC, __ F. __, slip op. (Fed. Cir. 2018).  The alleged prior art printed publication in question was a 2009 GoPro sales catalog distributed at a dealer trade show.  GoPro relied on the sales catalog in every ground challenging the claims of U.S. Patent Nos. 8,890,954 and 8,896,694.  After finding that the sales catalog did not qualify as a prior art printed publication under 35 U.S.C. §102(b), the PTAB held that none of the challenged claims were invalid.

The facts are uncontested.  Along with the sales catalog itself, GoPro produced a declaration from GoPro employee Damon Jones relating to the distribution of the sales catalog.  Mr. Jones worked for GoPro during the relevant time period and participated in various trade organizations related to GoPro’s business.  One such organization is Tucker Rocky Distributing, a trade organization focused on action sports vehicles and related apparel, parts, and accessories.  Mr. Jones testified that Tucker Rocky held its annual dealer trade between July 23 and July 27, 2009, which was attended by approximately 150 vendors and over 1,000 attendees. Mr. Jones further testified that he personally distributed the GoPro sales catalog to the attendees.

The PTAB found that the sales catalog did not qualify as a prior art printed publication because GoPro did not establish that it was disseminated or made available such that persons interested and ordinarily skilled in the art, exercising reasonable diligence, would be able to locate it.  In particular, the PTAB explained that GoPro did not provide evidence that the dealer show was advertised or announced to the general public, so a person of ordinary skill in the art would not have known about the dealer show.  Furthermore, the PTAB found that a person of ordinary skill in the art would not have been interested in the dealer show because it was not an academic conference or a camera industry conference.

The Federal Circuit reversed, finding that the PTAB interpreted the public accessibility case law too narrowly.  The question is not whether the general public knew or would have known about the conference, but rather whether the information could be located by “interested members of the relevant public” exercising reasonable diligence.  GoPro, slip op. at *10 (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988)) (emphasis in original).  The Federal Circuit explained that “although the general public at large may not have been aware of the trade show, dealers of POV cameras would encompass the relevant audience such that a person ordinarily skilled and interested in POV action cameras, exercising reasonable diligence, should have been aware of the show.”  Id. at *10-11.

Furthermore, the Federal Circuit criticized the PTAB for focusing its analysis on only one of several relevant factors.  These other factors include “the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.”  Id. at *8 (citing Medtronic v. Barry, 891 F.3d 1368, 1382-83).  The uncontested evidence showed that the GoPro sales catalog was disseminated with no restrictions and was intended to reach the general public.  Accordingly, the Federal Circuit concluded that GoPro met its burden to show that the sales catalog is a printed publication under §102(b).


This decision is a reminder that the Federal Circuit interprets §102(b) broadly.  The PTAB should analyze whether a printed publication could be located by interested members of the relevant public, not the general public, exercising reasonable diligence.  No single factor is dispositive, and all relevant factors should be considered.



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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a United States Patent and Trademark Office (USPTO) Examiner and more than 25 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the International Trade Commission (ITC). Dave has experience in diverse technology areas, including e-cigarettes, teeth whitening, diapers, fem care, antibodies, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.