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Federal Circuit Provides Guidance for “Printed Publication” Analysis in Inter Partes Reviews

Medtronic, Inc. v. Mark A. Barry, No. 17-1169 (Fed. Cir. June 11, 2018)

The Federal Circuit affirmed-in-part and vacated-in-part the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board’s (PTAB’s) finding that the challenged claims were not obvious. The Panel affirmed the PTAB’s finding that the claims would not have been obvious over the prior art of record; however, the Panel vacated the PTAB’s conclusion that certain other art was not a “printed publication.” The opinion was filed by Judge Chen and joined by Judge Taranto and Judge Plager.

During IPR, the PTAB held that a video and slide presentation disseminated during certain meetings and conferences were not “printed publications” within the meaning of the statute. The Federal Circuit Panel vacated that finding, holding that the PTAB “did not fully consider all the factors for determining whether the Video and Slides were publicly accessible.” Medtronic, No. 17-1169, slip op. at 2.

The Panel first reiterated the Klopfenstein factors for analyzing whether materials that are distributed at meetings or conferences constitute a “printed publication.” Ibid. at 21 (“(1) the length of time the display was exhibited, (2) the expertise of the target audience (to determine how easily those who viewed the material could retain the information), (3) the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and (4) the simplicity or ease with which the material displayed could have been copied.”) (internal quotations omitted), citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).

Next the Panel provided additional guidance regarding factors “relevant to this case,” where the dispute centered primarily on the public openness of the meetings, the number of attendees, and the skill level of the attendees. The Panel stated that, “the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed,” and “whether there is an expectation of confidentiality between the distributor and the recipients of the materials” are considerations that should be addressed. Ibid. at 21. The Panel remanded for further proceedings. Ibid. at 24.

Medtronic is a worthwhile read for those interested in how the PTAB is likely to handle prior art in the future. It should also worthwhile for those interested in the “sufficiently disseminated” requirement for a printed publication, as the opinion summarizes earlier case law regarding how this prong was analyzed with respect to whether such prior art constitutes a “printed publication.”

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