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Non-Patent Literature at the PTAB

Typically, the Patent Trial and Appeals Board (PTAB) is thought to disfavor non-patent literature—that is, “printed publications” under 35 U.S.C. § 102(b) that are not patents, patent publications, or patent applications.

To the extent that this is true, it most likely stems from the fact that members of the PTAB are, by training, used to dealing with patents, patent publications, or patent applications.  Further, it is relatively easy to determine the date of a printed publication that is a patent, patent publication, or patent application.  There can be tricky issues arising from Section 102(e), such as whether the date of a provisional application can be relied on.  However, there is not really any dispute about whether such applications were filed or when they were filed.

Not so with so-called non-patent literature.  One common area where this arises is with theses and dissertations.  If they are housed in a university library but not indexed by subject or searchable, do they qualify as “printed publications”?  What about a manuscript stored away in an attic?  These and other questions often arise in determining what qualifies as a “printed publication” under § 102(b).

In Medtronic v. Barry, No. 2017-1169, 2017-1170 (Fed. Cir. June 11, 2018), a precedential decision, the Federal Circuit confronted just this issue.  In providing an overview of the caselaw, the Federal Circuit noted that whether a document is a “printed publication” is “a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.”  Slip op. at 19.  The court noted that the key to making this determination was if the reference was “publicly accessible”:

“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.’

Slip op. at 19.

The issue presented itself in Medtronic v. Barry because, in the underlying IPR, Medtronic sought to rely on non-patent literature.  Specifically, Medtronic sought to rely on 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).  The video and slides were presented to spinal surgeons at various industry meetings and conferences in 2003.

The PTAB concluded in its final written decision that these were not prior art because they were accessible only to members of the “Spinal Deformity Study Group” (SDSG).  On appeal, the Federal Circuit vacated that part of the decision because the PTAB did not fully consider all the factors for determining whether the video and slides were publicly accessible.

The Federal Circuit noted that, of the factors relevant to this case, “the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed are important considerations. Another factor is whether there is an expectation of confidentiality between the distributor and the recipients of the materials.”  Slip op. 21-22.  One major fault of the PTAB’s decision is that it did not differentiate between one conference attended only by SDSG members and other conferences attended by other surgeons.  Also, the PTAB apparently did not address whether the disclosure to the SDSG members was confidential.  The court stated: “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.”  Slip op. at 22.

Because the PTAB did not consider the various case-specific factors necessary to determine whether a non-patent literature qualifies as a “printed publication”, the Federal Circuit vacated that part of the PTAB’s final written decision.  Both Petitioners and Patent Owners alike can benefit from this opinion.  Petitioners can use it to bolster their arguments that a relied-upon reference qualifies as a printed publication.  Likewise, Patent Owners can use the opinion to help identify weaknesses in such arguments.