Catalog Distributed at Conference (Not "Open to the Public") Is Publicly Accessible
GoPro, Inc. appealed from final written decisions of the Patent Trial and Appeal Board in two inter partes review (IPR) proceedings. In the proceedings, the Board found that the petitioner, GoPro, did not demonstrate that the challenged claims were unpatentable as obvious, and based this decision on its finding that a certain GoPro catalog was not a prior art printed publication. The sole issue on appeal is whether the GoPro catalog is prior art.
Contour IP Holding LLC owns U.S. Patent Nos. 8,890,954 and 8,896,694. The patents share a common specification that generally relates to and describes action sport video cameras or camcorders that are configured for remote image acquisition control and viewing. According to the patents, the claimed device uses global positioning system (GPS) technology to track its location during recording and a wireless connection protocol, such as Bluetooth, to provide control signals or stream data to the wearable video camera and to access image content stored on or streaming from the wearable video camera.
The patents further describe that when recording video or taking photographs in a sports application, a digital video camera is often mounted in a location that does not permit the user to easily see the camera. The digital camera includes wireless communication capability to allow another device, such as a smartphone or tablet, to control camera settings in real time, access video stored on the camera, and act as a "viewfinder" to preview what the camera sees.
Both the '954 and '694 patents claim priority to a provisional application filed on September 13, 2010. Thus, the one-year critical date is September 13, 2009.
GoPro petitioned for inter partes review of the '954 and '694 patents and challenged the patentability of the claims on obviousness grounds, relying on a 2009 GoPro sales catalog as prior art in each petition. The GoPro Catalog discloses a digital camera linked to a wireless viewfinder/controller that allows for a user to preview before recording.
The Board instituted both IPRs, and in its decisions to institute, the Board found that GoPro made a threshold showing that the GoPro Catalog is prior art. After the hearing, however, the Board found that the GoPro Catalog did not qualify as a prior art printed publication under 35 U.S.C. § 102(b), and because all the instituted grounds were based on the GoPro Catalog, the Board found that GoPro had not demonstrated that the challenged claims of the '954 and '694 patents were unpatentable under 35 U.S.C. § 103. GoPro appealed from these final written decisions to the Federal Circuit.
On appeal, neither the claim terms nor the claimed inventions are at issue in this appeal. The only issue is whether the GoPro Catalog is prior art. The '954 and '694 patents each have an effective filing date before the effective date of the Leahy-Smith America Invents Act ("AIA"). Thus, the pre-AIA version of 35 U.S.C. § 102 was applied.
Section 102(b) provides that a person shall be entitled to a patent unless the invention was described in a printed publication more than one year prior to the date of application for patent in the United States. The printed publication rule is based on the principle that once an invention is in the public domain, it can no longer be patented by anyone. Even relatively obscure documents qualify as prior art so long as the relevant public has a means of accessing them.
The most commonly referenced example is that even a single cataloged thesis in a university library was found to be sufficiently accessible to those interested in the art exercising reasonable diligence. Accessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to and if accessibility is proved, there is no requirement to show that particular members of the public actually received the information. Accordingly, 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.
Critical to its decision, the Board credited a declaration from GoPro employee, Damon Jones, relating to the distribution of the GoPro Catalog. Mr. Jones worked at GoPro from 2008 to 2016 and participated in various trade organizations relevant to GoPro's business. This included Tucker Rocky Distributing ("Tucker Rocky"), a trade organization focused on action sports. In his declaration, Mr. Jones testified that Tucker Rocky holds an annual dealer trade show, which he attended in Fort Worth, Texas, from July 23 through July 27, 2009, on GoPro's behalf. Mr. Jones also testified that at the 2009 show, there were approximately 150 vendors and more than 1,000 attendees, including actual and potential dealers, retailers, and customers of portable POV video cameras. Mr. Jones stated that he manned the GoPro booth at the show, where the GoPro Catalog was displayed, and that he personally distributed the GoPro Catalog to attendees. Attached to Mr. Jones's declaration, GoPro provided the catalog, a vendor list and map of the Tucker Rocky 2009 show, and email records supporting Mr. Jones's statements. The declaration from Mr. Jones also included testimony that GoPro continued to make the GoPro Catalog available to GoPro's actual and potential customers, dealers, and retailers through its website, direct mail, and other means of distribution.
In its Patent Owner Responses, Contour argued that GoPro had not demonstrated that the GoPro Catalog was a prior art printed publication. To support its argument, Contour submitted two pieces of evidence—a screenshot from Tucker Rocky's website from 2009 and a Facebook webpage for the 2013 Tucker Rocky Dealer Show. The 2009 website screenshot explained that Tucker Rocky is a wholesale distributor that does not sell to the public. The 2013 Facebook page stated that the 2013 Tucker Rocky Dealer Show was open to dealers but not the public. In its final written decisions, the Board concluded that GoPro had not met its burden to show that the GoPro Catalog was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art and exercising reasonable diligence could have located it.
On Appeal, the parties did not dispute any of the facts or evidence presented by GoPro regarding the distribution of its catalog. In addition, there is no dispute that the Tucker Rocky Dealer Show occurred before the critical date of the '954 and '694 patents. The only issue on appeal is whether the GoPro Catalog was sufficiently accessible as contemplated under § 102(b).
The Federal Circuit reversed the Board's decision, and agreed with GoPro in that Mr. Jones's declarations and corroborating evidence were sufficient to meet its burden of establishing that the GoPro Catalog was publicly accessible. The Federal Circuit noted that the case law regarding accessibility is not as narrow as the Board interpreted it. The Board focused on only one of several factors that are relevant to determining public accessibility in the context of materials distributed at conferences or meetings—i.e., that the conference was open to the public.
However, the nature of the conference or meeting must be considered. The Federal Circuit found that if one desires to examine certain new products on the market, attending a trade show involving identical or similar products is a good option. Mr. Jones testified that Tucker Rocky holds an annual trade show that draws thousands of attendees. In 2009, GoPro participated in the Tucker Rocky Dealer Show as a vendor and had a demonstration booth at the show. Mr. Jones testified that there were over 150 vendors, 1,000 attendees, and that GoPro displayed and distributed hundreds of copies of the GoPro Catalog to attendees at the show without restriction.
The Patent Owner did not cross-examine Mr. Jones, and does not point to any reason to doubt the veracity of his testimony.
Although the trade show was only open to dealers, there is no evidence or indication that any of the material disseminated or the products at the show excluded POV action cameras, or information related to such cameras. Contrary to the Board's conclusion, the attendees attracted to the show were likely more sophisticated and involved in the extreme action vehicle space than an average consumer. Thus, it is more likely than not that persons ordinarily skilled and interested in POV action cameras were in attendance or at least knew about the trade show and expected to find action sports cameras at the show.
The Board concluded that the GoPro Catalog was not a printed publication because the Tucker Rocky Dealer Show was not open to the general public and GoPro failed to provide evidence that someone ordinarily skilled in the art actually attended the dealer show. But the Federal Circuit found that the standard for public accessibility is one of reasonable diligence to locate the information by interested members of the relevant public. A dealer show focused on extreme sports vehicles is an obvious forum for POV action sports cameras. And 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.
Additionally, the GoPro Catalog was disseminated with no restrictions and was intended to reach the general public. Because the Board refused to accept the GoPro Catalog as a printed publication, it did not consider the merits of GoPro's obviousness claims. The Federal Circuit thus remanded the case for consideration of the catalog as prior art.
GoPro, Inc. v. Contour IP Holding LLC (Fed. Cir. 2018)
Panel: Circuit Judges Reyna, Wallach, and Hughes
Opinion by Circuit Judge Reyna
