Print still matters > Trade show catalog bars patent

April 18, 2019
Patterson Thuente IP

It’s easy to get excited when you come up with a new invention. But the U.S. Patent and Trademark Office won’t consider an invention novel enough to qualify for a patent if a publicly available printed publication “anticipated” it. With a recent ruling, the U.S. Court of Appeals for the Federal Circuit (which hears all appeals concerning patents), provided some guidance on how it determines whether a publication was publicly available on the relevant date.

Root of the problem

Nobel Biocare Services AG obtained a patent for a dental implant when it acquired Alpha Bio Tech Ltd. (ABT) in 2008. Ophir Fromovich, the founder and CEO of ABT, was listed as an inventor on the patent.

trade show article image

Instradent USA, Inc., sought inter partes review (IPR) of the patent from the Patent Trial and Appeal Board (PTAB) in 2015. Under IPR, the PTAB can reconsider and cancel an already-issued patent based on certain types of “prior art.” The Board’s final decision is subject to review by the Federal Circuit.

Prior art includes printed publications showing that the invention was anticipated, or obvious, before the so-called “critical date.” The critical date under the applicable law (prior to the America Invents Act) for this case was one year before the date of application filing, or May 23, 2003.

The PTAB found that several of Nobel’s patent’s claims were anticipated — and thus invalid — based on an ABT product catalog dated March 2003. Nobel appealed.

Brushed off

Nobel contended that the catalog didn’t qualify as a printed publication because it wasn’t publicly accessible. As the appeals court noted, public accessibility has been called the touchstone for determining whether a reference constitutes a printed publication. A reference is publicly accessible if it was disseminated or otherwise made available in a way that persons interested and “ordinarily skilled” in the subject could locate it by exercising reasonable diligence.

The court found that substantial evidence supported the PTAB’s finding that the catalog was publicly accessible before the critical date. For example, in March 2003, ABT’s Fromovich attended an annual industry trade show with about 1,000 attendees. ABT had a small booth at the show.

A dental supply distributor who attended the show testified that he’d collected catalogs from competitors at the show, at the request of his partner, who wanted to learn about ABT’s implant. The partner testified that he was certain the catalog was publicly available to the industry, including competitors, after the trade show. He also provided his copy of the catalog, which he had kept in his files. That copy and a copy offered as prior art by Instradent in the IPR had identical pages.

Notably, the court highlighted the distributor’s “habitual practice” in obtaining product literature at the annual trade show and cited an earlier case where evidence of a library’s general practice was relied on to establish when a thesis became accessible. According to the appeals court, evidence of a person’s habit can help prove that, on a particular occasion, that person acted in accordance with that routine practice.

Moreover, the catalog bore the date “March 2003” on its cover. The court conceded that this date wasn’t determinative of the date of public accessibility but found it relevant evidence supporting a finding of public accessibility at the trade show. In addition, Fromovich testified that the catalog likely was labeled with that date because the trade show was normally held at the end of March. And Nobel didn’t dispute that the catalog was the type of document typically intended for public dissemination.

Chew this over

Although U.S. patent law has been substantially amended since the events in this case, the publicly accessible requirement remains. Thus, the court’s ruling probably wouldn’t be different under current law. 

Nobel Biocare Svcs. AG v. Instradent USA, Inc., No. 17-2256, Sept. 13, 2018, Fed. Cir.

SAS Institute, Inc. v. Iancu, No. 16–969, April 24, 2018, S.Ct.

PTAB’s incomplete IPR doesn’t undermine court’s jurisdiction

Before turning to the printed publication question in Nobel Biocare Svcs. AG v. Instradent USA, Inc. (see main article), the U.S. Court of Appeals for the Federal Circuit first considered the issue of jurisdiction in light of the U.S. Supreme Court’s decision in SAS Institute, Inc. v. Iancu. The high court held there that the Patent Trial and Appeal Board (PTAB) must institute inter partes review (IPR) either on all of the claims a petitioner has challenged or none of them.

In Nobel, the PTAB didn’t review all of the challenged claims. But, as the Federal Circuit noted, neither party requested a remand to the Board for consideration of other claims or any other relief based on the SAS ruling.

According to the court, it has encountered similar situations since that case, where no party has requested SAS-based relief. In those cases — and this one — the Federal Circuit has held that it had jurisdiction and any error committed by the PTAB by instituting only partial IPR was waivable by the parties. It saw no reason to remand for review of noninstituted claims solely of its own accord.

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