Distribution at Attendee-Restricted Trade Show Still Prior Art Against Patent

On November 1, 2018, the Federal Circuit modified and reissued its opinion holding that a catalog disseminated at an attendee-restricted trade show was prior art.[1]

Contour IP Holdings received two issued patents related to action sport video cameras[2] GoPro, Inc. filed a petition for inter partes review (“IPR”) of the issued patents on the basis that the claims of the patent were obvious in view of a GoPro catalog (“catalog”) that was freely distributed at a trade show more than a year prior to the earliest filing date of the patents.  While the Patent Trial and Appeal Board (“PTAB”) granted the petition for IPR, the PTAB ultimately concluded that because the trade show was directed to wholesale distributors of action sport vehicles and was not open to the public, the GoPro catalog did not qualify as a prior art printed publication.  Because the catalog was not considered prior art by the PTAB, there was no evaluation of whether the Contour patent claims were obvious in view of the catalog.

On appeal, the Federal Circuit disagreed with the PTAB. Historically, what constitutes prior art[3] for purposes of evaluating patent claims has been broadly interpreted to include even obscure documents[4] provided the relevant audience can access the reference. For example, a single cataloged thesis in a university library was found to be available prior art.[5]

Contour conceded that the date of the catalog qualified for consideration as prior art but argued that because the trade show was not open to the public and did not target a person of ordinary skill in the art as a potential attendee, the catalog was not prior art against the Contour patent claims.  GoPro argued that there were more than 150 venders and 1000 attendees  at the trade show and there was no restriction on the distribution of the catalog, so the catalog was prior art against the Contour patent claims.

The Federal Circuit distilled the issue to: was the GoPro catalog was “sufficiently accessible” to qualify as prior art under 35 U.S.C.  § 102(b).[6]   In evaluating that question, the Federal Circuit noted that “[t]he fact that the [trade] show is focused on action sport vehicles is not preclusive of persons ordinarily skilled in the art from attending to see what POV digital cameras were being advertised and displayed.”[7]

The next step will be for the PTAB to determine if the Contour patent claims are obvious in view of the catalog.

Although the catalog was asserted by GoPro against a competitor’s patents, the decision in this case provides a cautionary tale for patent applicants. Filing for patent protection before disclosure outside of the company continues to be the safest course of action for protecting patent rights.

[1] GoPro, Inc. v. Contour IP Holding LLC (Fed. Cir. 2018)
[2] U.S. Patents 8,896,694 and U.S. Patent 8,890,954
[3] Prior art is a term used to describe information which is used to determine if a claimed invention is patentable (i.e., new and not obvious).
[4] Citing Jazz Pharm., Inv. v. Amneal Pharm., LLC (Fed. Cir. July 13, 2018)
[5] Citing In re Hall, 781 F.2d 897, 900 (Fed. Cir. 1986)
[6] The Contour patents were filed before the effective date of the Leahy-Smith America Invents Act (“AIA”), therefore the GoPro catalog would have been a reference under pre-AIA § 102(b) which is now covered under post-AIA § 102(a)(1) and §102(b)
[7] GoPro decision at p. 9