On February 8, in Weber, Inc. v. Provisur Technologies, Inc., the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) and held that Weber’s operating manuals are prior art printed publications despite their limited distribution and distribution subject to confidentiality restrictions based on the operating manuals being sufficiently accessible to the public interested in the art.

In this case, the PTAB instituted inter partes review (IPR) proceedings based on obviousness theories involving Weber’s operating manuals in combination with other patent references. In the PTAB’s final written decisions, the Board found that Weber’s operating manuals did not qualify as printed publications.

In support of this finding, the PTAB found that the operating manuals were only distributed to ten unique customers and subject to confidentiality restrictions in the copyright notice, which stated that the operating manuals should not “be reproduced or transferred in any way.” The PTAB also found another confidentiality restriction based on the intellectual property rights clause from Weber’s terms and conditions covering sales stating that “[c]ost estimates, drafts, drawings and other documents remain the property of [Weber].”

The Federal Circuit reversed the PTAB’s finding that the Weber operating manuals did not qualify as prior art printed publications under 35 U.S.C. § 102. The Federal Circuit explained that the statutory phrase “printed publication” in the patent statute is defined as a reference that was sufficiently accessible to the public interested in the art. The standard for public accessibility is whether interested members of the relevant public could locate the reference by reasonable diligence.

The Federal Circuit criticized the PTAB’s analysis, stating that the PTAB misapplied public-accessibility precedent and misinterpreted the record evidence. In concluding the Weber operating manuals were not publicly accessible, the PTAB relied on a prior Federal Circuit case, Cordis Corp. v. Boston Scientific Corp., where two academic monographs were found not to be publicly accessible where they were distributed under academic norms that gave rise to an expectation of confidentiality. In Weber, the Federal Circuit found Cordis distinguishable because Weber’s operating manuals were created for dissemination to provide instructions about how to use Weber’s product and were not distributed under circumstances where there was an expectation of confidentiality.

In finding the Weber operating manuals to be publicly accessible, the Federal Circuit relied on record evidence establishing that the Weber operating manuals could be obtained upon purchase of the Weber product or upon request to a Weber employee. The Federal Circuit noted that the number of actual occasions of access is not dispositive to the inquiry of public accessibility, and that the copyright notice itself permitted the original owners to copy the operating manuals for their own internal use and Weber expressly instructed customers reselling their Weber products to transfer the operating manual to the purchasers.

The Weber decision provides guidance in determining what disclosures qualify as prior art to patent filings. The circumstances surrounding the disclosure, such as the purpose of the document and industry expectations of confidentiality, must be considered. To ensure disclosures do not qualify as prior art, such disclosures should be made with clear and express expectations of confidentiality, for example, under a non-disclosure agreement.