Updated: Nov 13, 2020
GoPro, Inc. v. Contour IP Holding LLC
Decided: November 1, 2018
(modifying the July 27, 2018 opinion)
More than thirty years ago, the Federal Circuit explained that even relatively obscure documents may qualify as prior art under §102 so long as “interested members of the relevant public could obtain the information if they wanted to.” But what constitutes the “relevant public?”
A predecessor to Contour IP Holding sued GoPro for infringing its US patents 8,890,954 and 8,896,694, which claim techniques for remotely operating action sports video cameras. In subsequent IPR proceedings, the accused infringer urged the PTAB to find Contour’s claims invalid as obvious over a product catalog that GoPro had distributed at a trade show sponsored by Tucker Rocky, a wholesale distributor of parts, accessories and clothing associated with action sports vehicles such as motorcycles, ATVs and snowmobiles.
The Board ultimately concluded that GoPro had distributed its catalog to members of the public at the 2009 show, which was before the critical date. But it said that artisans of ordinary skill in the field of action sports cameras would not have been interested in attending the 2009 show, because it was not an academic or camera industry conference. And because these “interested members of the relevant public” would not have attended the Tucker Rocky show, the PTAB reasoned that GoPro’s catalog did not qualify as prior art under §102.
In its decision on appeal, the Federal Circuit said that although the expertise of the target audience “can be a factor in determining public accessibility” of a prior art document, the PTAB’s decision was flawed because it relied only on that factor. In addition to the expertise of the target audience, a finder of fact must also weigh these other factors:
the nature of the conference or meeting at which the information was distributed;
whether there are restrictions on public disclosure of the information;
expectations of confidentiality; and
expectations of sharing the information.
The panel also looked to the patents themselves, which clearly stated that one primary purpose of the claimed cameras was for use on action sports vehicles—which were the main focus of the 2009 Tucker Rocky tradeshow. And even though the tradeshow was not open to the general public—and GoPro failed to provide evidence that an ordinary artisan actually attended that show—the undisputed evidence established that actual and potential dealers, retailers, and purchasers of action sports video cameras attended the show.
Based on this record, the Federal Circuit concluded that GoPro met its burden to show that its catalog is a printed publication under §102(b); it then remanded the case to the PTAB with instructions to evaluate the merits of GoPro’s unpatentability claims based on the 2009 Catalog.
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