Printed publications: an evolving doctrine

The US Patent and Trademark Office (USPTO) offers various ways to attack a patent by showing unpatentability in view of prior art, including inter partes review (IPR), ex parte re-examination, and post-grant review (PGR), with IPR being by far the most popular.

With respect to prior art attacks, there have been numerous decisions by the US Court of Appeals for the Federal Circuit and the Patent Trial and Appeal Board (PTAB) involving whether a reference is considered a “printed publication”.

There is no question that, eg, an issued US patent or 18-month publication is a “printed publication”. What is more elusive is how a manual available to company employees, or a product catalogue distributed at a trade show, can constitute a “printed publication”.

This article explores why there is no bright-line rule, but some factors can be more important than others.

Types of printed publications

Under pre-America Invents Act (AIA) 35 USC section 102(b), a person is not entitled to a patent if her invention was “described in a printed publication ... more than one year prior to the date of the patent application”.

Under the newer law of the AIA, section 102(a)(1) states that a person shall be entitled to a patent unless “the claimed invention was ... described in a printed publication ... before the effective filing date of the claimed invention”.

It is well established that a reference is proven to be a “printed publication” upon a satisfactory showing that such document (i) has been disseminated; or (ii) otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.

That is, a reference is considered a “printed publication” by proving either (i) actual dissemination; or (ii) the reference was publicly accessible, which are two separate doctrines.

For either doctrine, this is a legal conclusion based on underlying factual determinations, and is a case-by-case enquiry (Medtronic v Barry [Federal Circuit, 2018]). Such a determination is fact-dependent involving multiple factors.

In December 2019, the PTAB issued a precedential decision laying down the factors for determining whether a reference is a “printed publication” in an IPR in Hulu v Sound View Innovations.

Prior to Hulu, the PTAB did not offer precedential guidance on what constitutes a “printed publication”. There were numerous IPR decisions that, even though patent attorneys understand that any “printed publication” determination is fact-driven, evaded consistency.