Although the Federal Circuit has analyzed the qualifications of prior art printed publications since its inception, the precise standards for public accessibility have become dramatically more important under PTAB jurisprudence. Although the “known or in use” provisions of 35 U.S.C. §§ 102 and 103 contemplate many forms of prior art, inter partes reviews (IPRs) may only be based on prior art in “printed publications.” Accordingly, the petitioner has the burden of showing that all cited prior art is both “printed” and “publicly accessible.” Public accessibility determinations are especially important at the institution phase since the Board’s refusal to institute review is generally not appealable.

Medtronic, Inc. v. Barry is the latest treatment of the printed publication requirement for prior art in an appeal arising from an IPR. Specifically, the Federal Circuit emphasized the fact-specific nature of the public accessibility determination and articulated five factors for analyzing the prior art qualifications of materials distributed at conferences and meetings:

1. The size and nature of the meeting;
2. whether the meeting is open to people interested in the subject matter of the material disclosed;
3. whether there is an expectation of confidentiality;
4. the expertise of the target audience; and
5. the purpose of the meeting.

In addition to articulating the five-factors to consider in determining if material counts as a printed publication, the details of Medtronic provide guidance as to how the test is applied. In that case, the challenged patent related to medical devices for use in spinal surgery. The disputed prior art was narrated video presentation submitted as a “printed publication” under § 102(b) for its audio and visual content. The video was presented to spinal surgeons at industry meetings and trade conferences.

The video was recorded on a CD that was distributed at three conferences prior to the critical date. The Board found that the CD satisfies the “printed” aspect of the requirement because it contains data that defines the displayed content. The Board found that the particular CD in question, however, did not satisfy the “publication” aspect of the requirement because it was not adequately disseminated to the relevant audience.

On appeal, the Federal Circuit agreed with the Board’s “printed” analysis but disagreed with the “publication” conclusion. The Court explained that accessibility, being the touchstone of the printed publication analysis, turns on whether the material 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.” The Court went on to clarify that accessibility depends not only on availability (such as the volume of dissemination) but also on considerations like awareness among the relevant audience, searchability, indexation, archiving, public display, and evidence of actual viewership or access.

Medtronic, Inc. v. Barry emphasized the fact-specific nature of the public accessibility determination and  articulated five factors for analyzing the prior art qualifications of materials distributed at conferences and meeting

RELATED CASES

• Gopro, Inc. v.  Contour  IP  Holding  LLC, 908 F.3d 690 (Fed. Cir. 2018) (finding that a well-attended dealer show can satisfy publication even if the target audience  is narrow because the inquiry relates to the relevant public rather than the general public).
• Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347 (Fed. Cir. 2018) (explaining that whether a reference is a printed publication is a case-by-case analysis; here, materials published in the Federal Register during the ACA notice and comment period were publically accessible because they were widely disseminated, even though they were not searchable and arguably not indexed).
• Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (finding that a product brochure distributed at a German industry conference qualified as printed publication where multiple witness testified as to the date and extent of the brochure’s dissemination in satisfaction of the “rule of reason” test for corroboration).
• Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765 (Fed. Cir. 2018) (technical report uploaded on a university library website not publicly accessible because reports in the website were not sufficiently disseminated to the public and not sufficiently indexed or searchable to be located through reasonable diligence).