Confidential Manual Deemed Not A Printed Publication

• Published date: 13 May 2022
• Subject Matter: Intellectual Property, Food, Drugs, Healthcare, Life Sciences, Patent, Food and Drugs Law
• Law Firm: Jones Day
• Author: Ms Alison E. Ibendahl and Joseph Beauchamp

In a recent decision, the Patent Trial and Appeals Board found that no claims challenged were unpatentable, after finding manuals relied upon as prior art did not qualify as "printed publications" under 35 U.S.C. ' 311(b). Weber, Inc. v. Provisur Technologies, Inc., IPR2020-01556, Paper 67 (March 31, 2022). The Patent Owner, Provisur, argued that Petitioner Weber's manuals were not printed publications because they were maintained as confidential, and the manuals only had a limited distribution. Concluding that Weber failed to establish by a preponderance of the evidence that its operating manuals constitute printed publications, the PTAB held that no challenged claims were unpatentable.

Weber filed a Petition for inter parte review of claims 1-16 of U.S. Patent No. 10,625,436 ("the '436 patent"). The '436 patent is currently owned by Provisur Technologies and claims a type of food slicer. The parties are also engaged in district court litigation involving the '436 patent. See Provisur Technologies, Inc. v. Weber, Inc. et al, Case No. 5-20-cv-06069 (W.D. Mo., filed May 6, 2020). Weber challenged the claims of the '436 patent as separately unpatentable over its 2006 904 Operating Manual ("the 2010 Manual") and 2010 904 Operating Manual ("the 2010 Manual") when combined with the Lindee reference.

A key dispute was whether Weber had adequately shown that the manuals qualified as "printed publications" within the requirements of 35 U.S.C. ' 311(b). Weber argued its manuals qualified as printed publications because they were included in over 50 shipments of food slicers. Weber also alleged that the manuals were available to the public upon request and available for inspection at trade shows. In response, Provisur argued that the manuals were not printed publications because the manuals provided with the food slicers were marked confidential and that it was industry custom to treat the manuals as being confidential. Provisur also argued that Weber had failed to provide evidence of any policy providing interested persons with access to the manuals.

A reference qualifies as a printed publication if it is accessible through reasonable diligence of an interested person of ordinary skill in the art. Under Cordis Corp. v. Boston Sci. Corp., "where a distribution is made to a limited number of entities, a binding agreement of confidentiality may defeat a finding of public accessibility." 561 F.3d 1319, 1333 (Fed. Cir. 2009). The Board began by analyzing if the manuals...