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​2128 "Printed Publications" as Prior Art [R-10.2019]

2128 "Printed Publications" as Prior Art [R-10.2019][Editor Note: For applications subject to the first inventor to file (FITF) provisions of the AIA, see also MPEP §§ 2152.02(b) and 2152.02(e)]

I. A REFERENCE IS A "PRINTED PUBLICATION" IF IT IS ACCESSIBLE TO THE PUBLICA reference is proven to be a "printed publication" "upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it." In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981) (quoting I.C.E. Corp. v. Armco Steel Corp., 250 F. Supp. 738, 743, 148 USPQ 537, 540 (SDNY 1966)) ("We agree that ‘printed publication’ should be approached as a unitary concept. The traditional dichotomy between ‘printed’ and ‘publication’ is no longer valid. Given the state of technology in document duplication, data storage, and data retrieval systems, the ‘probability of dissemination’ of an item very often has little to do with whether or not it is ‘printed’ in the sense of that word when it was introduced into the patent statutes in 1836. In any event, interpretation of the words ‘printed’ and ‘publication’ to mean ‘probability of dissemination’ and ‘public accessibility’ respectively, now seems to render their use in the phrase ‘printed publication’ somewhat redundant.") In re Wyer, 655 F.2d at 226, 210 USPQ at 794. See also Voter Verified, Inc. v. Premier Election Solutions, 698 F.3d 1374, 1380, 104 USPQ2d 1553, 1556-57 (Fed. Cir. 2012) ("the ultimate question is whether the reference was ‘available to the extent that persons interested and ordinary skilled in the subject matter or art[,] exercising reasonable diligence, can locate it’" (citations omitted)).

The Federal Circuit stated the following in Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380, 127 USPQ2d 1208, 1216-17 (Fed. Cir. 2018):

Whether a reference qualifies as a "printed publication" is a legal conclusion based on underlying factual determinations. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (citation omitted). "The ‘printed publication’ provision of § 102(b) ‘was designed to prevent withdrawal by an inventor ... of that which was already in the possession of the public.’ " Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (alteration in original) (quoting In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981)); see Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) ("This rule is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone." (internal quotation marks and citations omitted) ). Medtronic, as the patent challenger, bears the burden of establishing that a particular document is a printed publication. See Blue Calypso, 815 F.3d at 1350–51 (holding that petitioner failed to carry its burden of proving public accessibility of the allegedly invalidating reference).

The determination of whether a document is a "printed publication" under 35 U.S.C. § 102(b) "involves a case-by- case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public." In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). "Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b)." Blue Calypso, 815 F.3d at 1348 (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). "A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.’" Id. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).

See also Carella v. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986) (Starlight Archery argued that Carella’s patent claims to an archery sight were anticipated under pre-AIA 35 U.S.C. 102(a) by an advertisement in a Wisconsin Bow Hunter Association (WBHA) magazine and a WBHA mailer prepared prior to Carella’s filing date. However, there was no evidence as to when the mailer was received by any of the addressees. Plus, the magazine had not been mailed until 10 days after Carella’s filing date. The court held that since there was no proof that either the advertisement or mailer was accessible to any member of the public before the filing date there could be no rejection under pre-AIA 35 U.S.C. 102(a).).

When a document is cited in a rejection of a claim in an examination of a patent application or during an reexamination proceeding, an applicant or patent owner may challenge its public availability and/or the date it became publicly accessible, even when the document itself contains a publication date, by filing a proper affidavit or declaration under 37 CFR 1.132 that includes facts and evidence to support the applicant or patent owner's position. See MPEP § 716et seq.

II. ELECTRONIC PUBLICATIONS AS PRIOR ART

A.Status as a "Printed Publication"An electronic publication, including an online database or Internet publication (e.g., discussion group, forum, digital video, and social media post), is considered to be a "printed publication" within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) ("Accordingly, whether information is printed, handwritten, or on microfilm or a magnetic disc or tape, etc., the one who wishes to characterize the information, in whatever form it may be, as a ‘printed publication’ ... should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.’" (citations omitted).). See also Amazon.com v. Barnesandnoble.com, 73 F. Supp. 2d 1228, 53 USPQ2d 1115, 1119 (W.D. Wash. 1999) (Pages from a website were relied on by defendants as an anticipatory reference (to no avail), however status of the reference as prior art was not challenged.); In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Database printouts of abstracts which were not themselves prior art publications were properly relied as providing evidence that the software products referenced therein were "first installed" or "released" more than one year prior to applicant’s filing date.); Suffolk Tech v. AOL and Google, 752 F.3d 1358, 110 USPQ2d 2034 (Fed. Cir. 2014) (A newsgroup posting constituted prior art as it was directed to those having ordinary skill in the art and was publicly accessible because the post was sufficiently disseminated.)

The Office policy requiring recordation of the field of search and search results (see MPEP § 719.05) weighs in favor of finding that Internet and online database references cited by the examiner are "accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents." Wyer, 655 F.2d at 221, 210 USPQ at 790. Office copies of an electronic document must be retained if the same document may not be available for retrieval in the future. This is especially important for sources obtained from the Internet and online databases.

B.Date of AvailabilityPrior art disclosures on the Internet or on an online database are considered to be publicly available as of the date the item was publicly posted. See subsection I above. Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) or (b). However, it may be relied upon to provide evidence regarding the state of the art. Examiners may ask the Scientific and Technical Information Center to find the earliest date of publication or posting. See MPEP § 901.06(a), subsection IV.G.
C.Extent of Teachings Relied UponAn electronic publication, like any publication, may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP § 2121.01 and § 2123. Note, however, that if an electronic document which is the abstract of a patent or printed publication is relied upon in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103, only the text of the abstract (and not the underlying document) may be relied upon to support the rejection. In situations where the electronic version and the published paper version of the same or a corresponding patent or printed publication differ appreciably, each may need to be cited and relied upon as independent references based on what they disclose.

D.Internet Usage PolicySee MPEP § 904.02(c) for the portions of the Internet Usage Policy pertaining to Internet searching and documenting search strategies. See MPEP § 707.05(e) for the proper citation of electronic documents.

E.Wayback Machine ®The Wayback Machine® is a digital library maintained by the Internet Archive (a non-profit organization) for viewing information on archived digital Internet webpages. Simply, the Wayback Machine® uses software programs, known as crawlers, to surf the Internet and automatically store copies of Web objects (Web pages, images, videos, etc.), preserving these objects as they exist at the point and time of capture. These Web objects are stored as Web captures with the capture time/date in the form of a time stamp and the URL of the original website of capture. Accordingly, the Wayback Machine® provides the ability to view and browse Internet information that may no longer be available on the original website.

Prior art obtained via the Wayback Machine® sets forth a prima facie case that the art was publicly accessible at the date and time provided in the time stamp. The burden then shifts to the applicant should they wish to challenge the authenticity, reliability or accessibility of such information.

F.Social MediaSocial media websites on the Internet, such as YouTubeTM, TwitterTM, FacebookTM, and public forum posts, can be a source of prior art, provided the public accessibility requirements, as laid out in subsection I are met. Thus, all information on social media is not necessarily publically accessible. Public accessibility is determined on a case-by-case basis taking into consideration factors such as, where the information is posted, privacy restrictions placed on the posting, the length of time it was posted, and whether the information is indexed for searching.

Some social media websites are not archived by the Wayback Machine®. Therefore, examiners may have to rely on the timestamps on the social media sites to establish the public accessibility date. However, the accuracy of timestamps on social media websites may need to be scrutinized with care, as the reliability of some websites do not approach those of other types of Internet publications, such as those providing peer-reviewed material. When a document is cited in a rejection of a claim, an applicant or patent owner may challenge its public availability and/or date that it became publicly available, even where the information self-contains a publication date, by filing a proper affidavit or declaration under 37 CFR 1.132. See MPEP § 716et seq.

For examples of social media website citation formats see MPEP § 707.05(e).
III. EXAMINER NEED NOT PROVE ANYONE ACTUALLY LOOKED AT THE DOCUMENT
There is no need to prove that someone actually looked at a publication when that publication is accessible to the public through a library or patent office. See In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). "A reference is considered publicly accessible 'upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.' 'If accessibility is proved, there is no requirement to show that particular members of the public actually received the information.'" Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355-1356 (Fed. Cir. 2018) (quoting Wyer, 655 F.2d at 226) and Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 , 1569 (Fed. Cir. 1988)).

2128.01 Level of Public Accessibility Required [R-10.2019]
The statutory phrase "printed publication" has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was "published." Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568, 7 U.S.P.Q.2d 1057, 1062 (Fed. Cir. 1988)

I. A THESIS PLACED IN A UNIVERSITY LIBRARY OR A DOCUMENT PLACED IN AN ONLINE DATABASE MAY BE PRIOR ART IF SUFFICIENTLY ACCESSIBLE TO THE PUBLICA doctoral thesis indexed and shelved in a library is sufficiently accessible to the public to constitute prior art as a "printed publication." In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). Even if access to the library is restricted, a reference will constitute a "printed publication" as long as a presumption is raised that the portion of the public concerned with the art would know of the invention. In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978).

In In re Hall, general library cataloging and shelving practices showed that a doctoral thesis deposited in university library would have been indexed, cataloged and shelved and thus available to the public before the critical date. Compare In re Cronyn, 890 F.2d 1158, 13 USPQ2d 1070 (Fed. Cir. 1989) wherein doctoral theses were shelved and indexed by index cards filed alphabetically by student name and kept in a shoe box in the chemistry library. The index cards only listed the student name and title of the thesis. In Cronyn, the court held that the students’ theses were not accessible to the public because they had not been either cataloged or indexed in a meaningful way, e.g., by title or in some other way that bears a relationship to the subject of the thesis, but instead were cataloged by the researcher's name. Compare In re Bayer, 568 F.2d 1357, 196 USPQ 670 (CCPA 1978) (A reference will constitute a "printed publication" as long as a presumption is raised that the portion of the public concerned with the art would know of the invention even if accessibility is restricted to only this part of the public. But accessibility to applicant’s thesis was restricted to only three members of a graduate committee. There can be no presumption that those concerned with the art would have known of the invention in this case.).

In determining whether a document in an online database is a printed publication, public accessibility is key. See MPEP § 2128, subsection I. In Voter Verified, Inc. v. Premier Election Sols., Inc. the court found that "(i)ndexing is not ‘a necessary condition for a reference to be publicly accessible’; it is but one among many factors that may bear on public accessibility." Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1381, 104 USPQ2d 1553, 1557 (Fed. Cir. 2012) (quoting In re Lister, 583 F.3d 1307, 1312, 92 USPQ2d 1225, 1228 (Fed. Cir. 2009)). The court further stated that "indexing is no more or less important in evaluating the public accessibility of online references than for those fixed in more traditional, tangible media". Id.

A document in an online database is not always deemed a printed publication. In Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed. Cir. 2018), the court agreed with the Board that an electronic technical report did not constitute a "printed publication" within the meaning of (pre‑AIA) 35 U.S.C. 102(a). The court agreed with the Board that an interested skilled artisan, using reasonable diligence, would not have been able to find the technical report on the CSE Technical Reports Library website despite some indexing and search functionality on the website that permitted technical accessibility. Technical reports were listed only by author or year, and there was no evidence how many reports were in the Library’s database in 1999. It was determined that at best, an artisan might have located the cited technical report by skimming through potentially hundreds of titles in the same year, with most containing unrelated subject matter, or by viewing all titles in the database listed by author, when the authors were not particularly well known. Also, the website’s advanced search form was found to be deficient because the ability to search keywords for author, title, and abstract fields was not reliable.

II. ORALLY PRESENTED PAPER CAN CONSTITUTE A "PRINTED PUBLICATION" IF WRITTEN COPIES ARE AVAILABLE WITHOUT RESTRICTIONA paper which is orally presented in a forum open to all interested persons constitutes a "printed publication" if written copies are disseminated without restriction. Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir. 1985) (Paper orally presented to between 50 and 500 persons at a scientific meeting open to all persons interested in the subject matter, with written copies distributed without restriction to all who requested, is a printed publication. Six persons requested and obtained copies.). An oral presentation at a scientific meeting or a demonstration at a trade show may be prior art under 35 U.S.C. 102(a)(1)’s provision: "otherwise available to the public." See MPEP § 2152.02(e).

III. INTERNAL DOCUMENTS INTENDED TO BE CONFIDENTIAL ARE NOT "PRINTED PUBLICATIONS"Documents and items only distributed internally within an organization which are intended to remain confidential are not "printed publications" no matter how many copies are distributed. There must be an existing policy of confidentiality or agreement to remain confidential within the organization. Mere intent to remain confidential is insufficient. In re George, 2 USPQ2d 1880 (Bd. Pat. App. & Inter. 1987) (Research reports disseminated in-house to only those persons who understood the policy of confidentiality regarding such reports are not printed publications even though the policy was not specifically stated in writing.); Garret Corp. v. United States, 422 F.2d 874, 878, 164 USPQ 521, 524 (Ct. Cl.1970) ("While distribution to government agencies and personnel alone may not constitute publication ... distribution to commercial companies without restriction on use clearly does."); Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 15 USPQ2d 1321 (Fed. Cir. 1990) (Four reports on the AESOP-B military computer system which were not under security classification were distributed to about fifty organizations involved in the AESOP-B project. One document contained the legend "Reproduction or further dissemination is not authorized." The other documents were of the class that would contain this legend. The documents were housed in Mitre Corporation’s library. Access to this library was restricted to those involved in the AESOP-B project. The court held that public access was insufficient to make the documents "printed publications.").

IV. PUBLICLY DISPLAYED REFERENCES CAN CONSTITUTE A "PRINTED PUBLICATION" EVEN IF THE REFERENCES ARE NOT DISSEMINATED BY COPIES OR INDEXED IN A LIBRARY OR DATABASEA publicly displayed document where persons of ordinary skill in the art could see it and are not precluded from copying it can constitute a "printed publication," even if it is not disseminated by the distribution of reproductions or copies and/or indexed in a library or database.

As stated in In re Klopfenstein, 380 F.3d 1345, 1348, 72 USPQ2d 1117, 1119 (Fed. Cir. 2004), "the key inquiry is whether or not a reference has been made ‘publicly accessible.’" Prior to the critical date, a fourteen-slide presentation disclosing the invention was printed and pasted onto poster boards. The printed slide presentation was displayed with no confidentiality restrictions for approximately three cumulative days at two different industry events. Id. at 1347, 72 USPQ2d at 1118. The court noted that "an entirely oral presentation at a scientific conference that includes neither slides nor copies of the presentation is without question not a 'printed publication' for the purposes of [pre-AIA] 35 U.S.C. § 102(b). Furthermore, a presentation that includes a transient display of slides is likewise not necessarily a ‘printed publication.’" Id. at 1349 n.4, 72 USPQ2d at 1120 n.4. In resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a "printed publication" under pre-AIA 35 U.S.C. 102(b), the court considered the following factors: "the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied." Id. at 1350, 72 USPQ2d at 1120. Upon reviewing the above factors, the court concluded that the display "was sufficiently publicly accessible to count as a ‘printed publication.’" Id. at 1352, 72 USPQ2d at 1121.

Similarly, in Medtronic Inc., v. Barry (891 F.3d 1368, 127 USPQ 1208) (Fed. Cir. 2018) a video and slides presented at two conferences prior to the critical date were found to be publically accessible. When considering the factors set forth in In re Klopfenstein, the court stated "[i]t may be relevant to determine whether … members were expected to maintain the confidentiality of received materials or would be permitted to share or even publicize the insights gained and materials collected…". Id at 127 USPQ2d at 1218. In addition, in GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 128 USPQ2d 1447 (Fed. Cir. 2018), the court stated that the expertise of the target audience is a factor in determining public accessibility but 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." Id. at 695, 128 USPQ2d at 1451.

See also Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 127 USPQ2d 1485 (Fed. Cir. 2018) (A notice in the Federal Register which included instructions on accessing reference materials was sufficient for the materials to be considered publicly accessible; the Board did not need to find that specific persons actually received or examined the materials).

"We have consistently held that indexing or searchability is unnecessary for a reference to be a printed publication." Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1359, 127 USPQ2d 1485,1493 (Fed. Cir. 2018). But see Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773, USPQ2d 1507, 1514 (Fed. Cir. 2018)(an electronic technical report did not constitute a "printed publication" because the indexing or searchability was deficient, and an interested skilled artisan, using reasonable diligence, would have to skim through potentially hundreds of titles in the same year, with most containing unrelated subject matter).

Note that an oral presentation at a scientific meeting or a demonstration at a trade show may be prior art under 35 U.S.C. 102(a)(1)’s provision: "otherwise available to the public." See MPEP § 2152.02(e). "Trade shows are not unlike conferences - a trade show is directed to individuals interested in the commercial and developmental aspects of products. If one desires to examine certain new products on the market, attending a trade show involving identical or similar products is a good option." GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 694, 128 USPQ2d 1447, 1451 (Fed. Cir. 2018).

2128.02 Date Publication Is Available as a Reference [R-10.2019]I. DATE OF ACCESSIBILITY CAN BE SHOWN THROUGH EVIDENCE OF ROUTINE BUSINESS PRACTICESEvidence showing routine business practices can be used to establish the date on which a publication became accessible to the public. Specific evidence showing when the specific document actually became available is not always necessary. Constant v. Advanced Micro-Devices,Inc., 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir.), cert. denied, 988 U.S. 892 (1988) (Court held that evidence submitted by Intel regarding undated specification sheets showing how the company usually treated such specification sheets was enough to show that the sheets were accessible by the public before the critical date.); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986) (Librarian’s affidavit establishing normal time frame and practice for indexing, cataloging and shelving doctoral theses established that the thesis in question would have been accessible by the public before the critical date.); In re Lister, 583 F.3d 1307, 1317, 92 USPQ2d 1225, 1231-32 (Fed. Cir. 2009) ("The government urges us that it is appropriate in this case to presume that the manuscript information was added to the Westlaw and Dialog databases prior to the critical date because the critical date was more than a year after the certificate of registration was granted. However, absent any evidence pertaining to the general practices of the Copyright Office, Westlaw, and Dialog, or the typical time that elapses between copyright registration, inclusion in the Copyright Office’s automated catalog, and subsequent incorporation into one of the commercial databases, any presumption along those lines would be pure speculation.").

II. A JOURNAL ARTICLE OR OTHER PUBLICATION BECOMES AVAILABLE AS PRIOR ART ON DATE IT IS RECEIVED BY A MEMBER OF THE PUBLICA publication disseminated by mail is not prior art until it is received by at least one member of the public. Thus, a magazine or technical journal is effective as of the date when the first person receives it, not the date it was mailed or sent to the publisher. In re Schlittler, 234 F.2d 882, 110 USPQ 304 (CCPA 1956).​