What Is A "Printed Publication?": Considerations Of Factors Surrounding Distribution Of Operating Manual

• Published date: 23 June 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Foley & Lardner
• Author: Mr Austin J. Kim

Weber, Inc. v. Provisur Technologies, Inc. (IPR-2020-01556)

Earlier this year, the Patent Trial and Appeal Board (PTAB) held in Weber v. Provisur Technologies, Inc. that operating manuals under lock and key did not constitute "printed publications" and thus were not eligible as prior art for inter partes proceedings under 35 U.S.C. ' 311(b). In its rationale, the PTAB pointed to a number of factors, such as the limited number of manuals that were distributed, an inscription within the manuals designating them as confidential, and widespread expectation of confidentiality within the industry, among others.

Weber filed a petition requesting an IPR of claims 1-16 of U.S. Pat. No. 10,625,436 (the '436 patent), which was the subject of parallel patent litigation. The '436 patent is directed to a high-speed slicing machine for food articles, with independent feeding and weighing capabilities. The petitioner had challenged the claims of the '436 patent as obvious in view of two of its own operating manuals relating to slicer machines in combination with an issued patent.

The key issue in this proceeding was whether Weber had sufficiently shown that its own operating manuals qualified as "printed publications" under 35 U.S.C. ' 311(b). Under this section, claims may be challenged only on the basis of prior art consisting of patents or "printed publications." Whether a reference constitutes a "printed publication" is dependent on whether c"persons interested and ordinarily skilled in the subject matter.exercising reasonable diligence can locate it."¹ Furthermore, "[w]here a distribution is made to a limited number of entities, a binding agreement of confidentiality may defeat a finding of public accessibility."²

Weber argued that operating manuals along with the accompanying slicer machine products were allegedly distributed to others as early as November 15, 2007, predating the earliest priority date of the '436 patent of May 1, 2020. Weber also brought forth evidence that the machines for which the operating manuals were made were publicly advertised in magazine articles. In addition, Weber provided testimonial evidence from its own employees that the operating manuals and the machines were shown in trade shows, and thus available to interested members of the public.

Patent owner Provisur argued that the operating manuals did not constitute "printed publications" due to the confidentiality surrounding these manuals. First, Provisur pointed out that the manuals...