Federal Circuit Slices PTAB's Printed Publication Finding

• Published date: 01 March 2024
• Subject Matter: Intellectual Property, Patent
• Law Firm: Jones Day
• Author: Jareli Reynoso Gutierrez and Carl Kukkonen III

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...