Federal Circuit Slices PTAB’s Printed Publication Finding | Jones Day
Recently, the Court of Appeals for the Federal Circuit reversed one and vacated another Patent Trial and Appeal Board (“PTAB”) final written decision in which the PTAB determined that Weber Inc. (“Weber”) failed to demonstrate that certain patent claims related to food slicers owned by Provisur Technologies, Inc. (“Provisur”) were invalid. Weber v. Provisur Technology, Nos. 2022-1751, 2022-1813 (Fed. Cir. February 8, 2024). The Federal Circuit held that substantial evidence supported a showing that Weber’s operating manuals qualified as printed publications under 35 U.S.C. § 102, contrary to the PTAB’s determination.
Provisur owns U.S. Patent Nos. 10,639,812 (“’812 patent”) and 10,625,436 (“’436 patent”), related to high-speed mechanical food slicers used in food-processing plants. Provisur sued Weber in federal court for infringement of the ’812 patent and the ’436 patent. Weber filed two inter partes review (“IPR”) petitions challenging the patentability of certain claims of the ’812 patent and the ’436 patent. Weber’s petition contended that the claims were obvious in view of its commercial food slicer operating manuals as printed publications. The PTAB concluded (1) that the operating manuals were not printed publications and (2) that Weber failed to establish the unpatentability of the challenged claims.
First, the Federal Circuit reviewed what qualifies as a printed publication. The primary criteria to determine if a reference qualifies as a printed publication is “public accessibility.” The standard way to determine public accessibility is to consider if interested members of the relevant public could find the reference through reasonable diligence. Weber argued that the PTAB misapplied the public accessibility precedent in Cordis Corp. v. Boston Scientific Corp. and misinterpreted the record evidence Weber presented. 561 F.3d 1319 (Fed. Cir. 2009). The Federal Circuit agreed with Weber that the PTAB incorrectly relied on Cordis to analyze if Weber’s operating manuals were publicly accessible. In Cordis, there was no showing that the relevant documents would have been made publicly accessible and it was evident that the academic norms contributed to an expectation of confidentiality. The Federal Circuit distinguished Cordis by noting that Weber’s operating manuals were created for dissemination to the interested public and could have been obtained upon request through an employee or through the purchase of a food slicer.
The Federal Circuit also noted that the PTAB unreasonably emphasized alleged confidentiality restrictions within the operating manuals to show the manuals were not publicly accessible. However, regardless of any confidentiality restrictions applying to customers, the Federal Circuit noted that such restrictions did not negate Weber’s ability to make the manuals publicly accessible. As such, the Federal Circuit reversed the PTAB’s finding that the operating manuals did not qualify as printed publications.
Next, the Federal Circuit discussed its disagreement with the PTAB’s interpretation of the “disposed over” and “stop gate” limitations. The PTAB determined that even if the operating manuals qualified as printed publications, Weber failed to disclose the “disposed over” and “stop gate” limitations; thus, failing to prove the unpatentability of the dependent claims. The Federal Circuit disagreed that the “disposed over” limitation existed. The Federal Circuit pointed to the language within the claim in determining that the “disposed over” limitation was not present, noted that the specifications did not use the term “disposed over,” and stated that its review of prosecution history of the patent did not alter its determination. With respect to the “stop gate” limitation, the Federal Circuit noted that the PTAB failed to meaningfully consider the expert testimony and the figures Weber cited showing that the “stop gate” limitation was disclosed. As such, the Federal Circuit vacated the PTAB’s conclusions that Weber failed to establish the unpatentability of the claims.
Takeaway:
When referencing printed publications in IPR arguments, practitioners should ensure that they clearly and unambiguously present all arguments that such printed publications were publicly accessible at the time of the contested invention.
