“Where, as here, the ‘purpose of a publication is ‘dialogue with the intended audience,’ that purpose indicates public access.” – CAFC
On February 8, the US Court of Appeals for the Federal Circuit issued a precedent-setting decision in Weber, Inc. v. Provisur Technologies, Inc. that overturned decisions by the Patent Trial and Appeal Board (PTAB) challenging validity challenges by US grill maker Weber against Provisur’s food slicer commercial patent claims. The Federal Circuit reversed the PTAB on claim construction and also found that the Board misapplied CAFC precedent to the level of public distribution required before print publications qualify as prior art.
Weber filed petitions for between the parties review (IPR) proceedings at the PTAB to challenge the validity of claims from two Provisional patents asserted against Weber in a district court infringement lawsuit. These patents, both titled High speed cutting machineare US patent no. 10625436 and US patent no. 10639812. Weber contested both patents’ claims for obviousness based on combinations of US patent filings and operating manuals that Weber distributed to explain the operation of its commercial food slicers to customers.
PTAB reverses course on public availability of prior art operating manuals
After institution, the PTAB concluded that the company’s operating manuals were sufficiently available to the public to qualify as a prior art printed publication. However, in final written decisions terminating these IPRs, the PTAB instead found that Weber was too restrictive of its operating manual, which had been distributed to only ten unique customers. Further, the Board found that the public availability of Weber’s operating manuals was limited, subject to certain confidentiality restrictions, including intellectual property provisions and copyright notices printed within the manuals. Even if the operating manuals qualified as prior art, the PTAB still found that the combination of prior art references did not disclose the limitations of the “available” and “gateway” claims in the Provisional patents.
On appeal, the Federal Circuit found that the PTAB’s misapplied case law precedent on public access stemming from the appeals court’s 2009 decision in Cordis Corp. v. Boston Scientific Corp . In that case, the Federal Circuit found that academic monographs describing intravascular stents did not qualify as prior art print publications because of low distribution as well as the impact of academic norms, which created an expectation that the monographs would remain confidential after distribution. to some academic colleagues and potential commercial partners.
As explained by the Federal Circuit, of the heart is easily distinguishable from the present complaint. While holding on of the heart was motivated by academic norms of confidentiality, Weber’s operating manuals were rather intended for distribution to members of the public interested in maintaining and troubleshooting Weber’s commercial food slicers. “Where, as here, the ‘purpose of a publication is “dialogue with the intended audience,” that purpose indicates public access,” the Federal Circuit concluded.
Not only did the expert testimony show that Weber distributed operating manuals with the sale of each commercial food slicer, but that interested members of the public could obtain manuals from Weber employees upon request. In footnotes, the Federal Circuit added that there was no minimum number of access cases dispositive of the public access inquiry and that the high cost of the cutters themselves did not make the operating manuals sufficiently inaccessible.
The IP provisions within the operating manuals do not create confidentiality restrictions
In reaching the opposite finding, the PTAB placed undue emphasis on intellectual property provisions that the Board interpreted as confidentiality restrictions. The Federal Circuit found that the copyright notice allows original owners of Weber commercial food slicers, as well as their personnel, to copy the manual for internal use. The evidence also showed that Weber instructed the original owners to turn over their operating manuals when they sold their cutter to third parties, further establishing the public distribution of those materials.
Addressing the prior art print issue, the Federal Circuit proceeded to reverse both PTAB claims challenged on appeal by Weber. Analyzing whether the food processor, conveyor belt, and clamps are “disposed” over the food loading apparatus, the Federal Circuit noted that the plain language of the claims requires only that the food processor be generally placed over the loading apparatus. The Board’s narrower construction, which required that the food components and carriers be positioned “in vertical and lateral alignment” with the loading apparatus, erroneously described a more specific meaning that was not supported by the patent specifications.
The Federal Circuit also found that the PTAB improperly ignored Weber’s expert testimony about the “stop gate” claim limitation, which requires the stop gate to support food items when the lift tray is lowered to receive new food items . Although Weber’s operating manuals disclose such a stop gate, the PTAB discredited those disclosures because the product diagrams in the manuals did not show food items actually in the slicer or food conveyor. As the appeals court explained, because the stop gate is expressly disclosed by the operating manuals, “an image of a food item is not needed to understand those teachings.”
Finding Provisur’s remaining arguments unpersuasive, the Federal Circuit vacated the PTAB’s rulings that Weber failed to prove the unpatentability of the ‘436 and ‘812 patents. The case is remanded to the PTAB for further rulings consistent with the Federal Circuit’s opinion.
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