Docket No. 2017-1894, -1936 (IPR2015-01078, -01080)
REYNA, WALLACH, HUGHES
Original opinion: July 27, 2018; modified and reissued opinion: Nov. 1, 2018
Brief summary: Board decisions that GoPro did not show unpatentability for obviousness vacated and remanded with instructions to “consider the GoPro Catalog as prior art and evaluate the merits of GoPro’s” arguments since, e.g., “it is more likely than not that” interested persons “at least knew about the trade show and expected to find action sports cameras” there.
Summary: GoPro appealed PTAB (“Board”) decision that it did not show Contour’s US 8,890,954 and US 8,896,694 relating to digital cameras are invalid for obviousness because “a certain GoPro catalog is not a prior art printed publication.” The pre-AIA § 102(b) one-year critical date for the patents is Sept. 13, 2009 based on the shared Sept. 13, 2010 filing date. In its decision to institute the IPRs, the Board determined “that GoPro made a threshold showing that the GoPro catalog is prior art”, based in part on a declaration by a GoPro employee regarding the distribution of the catalog at a trade show. Contour argued the catalog was not prior art since the show “was open to dealers but not the public.” In its final written decision (FWD), the Board concluded that GoPro had not shown “that the GoPro Catalog was disseminated or otherwise made available to the extent persons interested and ordinarily skilled in the subject matter or art and exercising reasonable diligence could have located it.” The FC panel reviewed the Board’s findings of fact for substantial evidence (§ 706(2)(E)) and its decision of whether the catalog was prior art de novo (In re Klopfenstein, FC 2004 (“a question of law”). The FC panel explained that it has “interpreted § 102 broadly, finding that even relatively obscure documents qualify as prior art so long as the relevant public has a means of accessing them” (Jazz, FC 2018; In re Hall, FC 1986 (single cataloged thesis in a university library was ‘sufficient[ly] accessible to those interested’”); Constant, FC 1988 (“no requirement to show that particular members of the public actually received the information”); Medtronic, FC 2018 (“The expertise of the target audience can be a factor” but “is not dispositive”.); Blue Calypso, FC 2016 (“the standard for public accessibility is one of ‘reasonable diligence’”)). The FC panel disagreed with the Board’s conclusion that the catalog was not prior art because “GoPro did not provide evidence that the dealer show was advertised or announced to the public”, explaining that “[t]he case law regarding accessibility is not as narrow as the Board interprets it”. The FC panel found “[t]he fact that the dealer show focused on action sports vehicles is not preclusive of persons ordinarily skilled from attending to see what POV digital cameras were being advertised and displayed.” “Thus,” the FC panel concluded, “it is more likely than not that” interested persons “at least knew about the trade show and expected to find action sports cameras” there. Thus, the Board decisions were vacated and remanded with instructions to “consider the GoPro Catalog as prior art and evaluate the merits of GoPro’s unpatentability claims.”