Catalog Copies Distributed at an Annular Dealer Trade Show By the Challenger’s Rep is Prior Art

The Court of Appeals for the Federal Circuit reversed a finding by the Patent Trial and Appeals Board (“Board”), holding that the evidence supported a finding that petitioner-challenger Gopro’s catalog was publicly distributed at a trade show prior to the critical date of the patent. The evidence included testimony from Mr. Jones, a representative of Gopro, who personally distributed the GoPro Catalog to trade show attendees from Gopro’s booth. There were approximately 150 vendors and more than 1,000 attendees, including actual and potential dealers, retailers, and customers of portable POV video cameras. Emails and vendor maps of the trade show further supported Jones’ testimony. Earlier, the Board had ruled that GoPro had not met its burden to show that the GoPro Catalog was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art and exercising reasonable diligence could have located it. The Federal Circuit reversed and applied the multi-factor test including (a) the nature of the conference or meeting; (b) whether there are restrictions on public disclosure of the information; ( c) expectations of confidentiality; (d) expectations of sharing the information; and (e) the expertise of the target audience. These factors determine whether or not the catalog was publicly accessible. GoPro, Inc. v. Contour IP Holding LLC, Case No. 2017-1894 (Fed. Cir. Nov. 1, 2018) (PDF Available Here).

According to the patents, the claimed device uses global positioning system (GPS) technology to track its location during recording and a wireless connection protocol, such as Bluetooth, to “provide control signals or stream data to [the] wearable video camera and to access image content stored on or streaming from [the] wearable video camera.”

GoPro petitioned for inter partes review (“IPR”) of Contour’s patents asserting a 2009 GoPro sales catalog (“catalog”) was prior art to the patents. The GoPro Catalog discloses a digital camera linked to a wireless viewfinder/controller that allows for a user preview before recording.

The Board concluded that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar discipline, and some experience creating, programming, or working with digital video cameras, such as point of view (“POV”) action sports video cameras.

In his declaration, Mr. Jones testified that Tucker Rocky holds an annual dealer trade show, which he attended in Fort Worth, Texas, from July 23 through July 27, 2009, on GoPro’s behalf. Mr. Jones also testified that at the 2009 show, there were approximately 150 vendors and more than 1,000 attendees, including actual and potential dealers, retailers, and customers of portable POV video cameras. Mr. Jones stated that he manned the GoPro booth at the show, where the GoPro Catalog was displayed, and that he personally distributed the GoPro Catalog to attendees. Attached to Mr. Jones’s declaration, GoPro provided the catalog, a vendor list and map of the Tucker Rocky 2009 show, and email records supporting Mr. Jones’s statements.

Specifically, the Board concluded that GoPro had not met its burden to show that the GoPro Catalog was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art and exercising reasonable diligence could have located it.

The Board focused on only one of several factors that are relevant to determining public accessibility in the context of materials distributed at conferences or meetings. Medtronic v. Barry, 891 F.3d 1368, 1382 (Fed. Cir. 2018) (“The expertise of the target audience can be a factor in determining public accessibility. But this factor alone is not dispositive of the inquiry”). “Rather, our case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information. When direct availability to an ordinarily skilled artisan is no longer viewed as dispositive, the undisputed record evidence compels a conclusion that the GoPro Catalog is a printed publication as a matter of law.”

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