Locked user manuals are not printed publications

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Weber, Inc. v. Provisur Technologies, Inc. (IPR-2020-01556)

Earlier this year, the Patent Trial and Appeal Board (PTAB) ruled in Weber v. 35 USC § 311(b). In its rationale, the PTAB pointed to a number of factors, such as the limited number of manuals distributed, a marking in the manuals designating them as confidential, and a general expectation of confidentiality within the industry, among others.

Weber filed a petition seeking IPR of claims 1-16 of the US patent. No. 10,625,436 (the ‘436 patent), which was the subject of parallel patent litigation. The ‘436 patent relates to a high-speed slicer for food items, with independent feeding and weighing capabilities. The petitioner had challenged the claims of the ‘436 patent as being obvious from two of his own trencher instruction manuals in combination with an issued patent.

The key issue in this proceeding was whether Weber had sufficiently demonstrated that its own user manuals qualified as “printed publications” under 35 USC § 311(b). Under this section, claims can only be challenged on the basis of prior art consisting of patents or “printed publications”. Whether a reference constitutes a “print publication” depends on whether “persons interested and ordinarily skilled in the art … exercising due diligence can locate it.”1 Otherwise, “[w]here a distribution is made to a limited number of entities, a binding confidentiality agreement may override a finding of public accessibility.2

Weber argued that the user manuals along with the accompanying slicing machine products would have been distributed to others as early as November 15, 2007, prior to the first priority date of the ‘436 patent of May 1, 2020. Weber also provided evidence that the machines for which user manuals were written were publicly advertised in magazine articles. In addition, Weber provided testimonials from its own employees that the operator’s manuals and machines were displayed at trade shows, and therefore available to interested members of the public.

The Provisur patentee argued that the user manuals were not “printed publications” because of the confidentiality surrounding such manuals. First, Provisur pointed out that the manuals themselves contained markings restricting transfer by the original recipient and that the accompanying sales and delivery agreement prohibited their distribution. Second, Provisur noted that there is a widespread expectation of product manual confidentiality in the industry. Third, Provisur presented evidence that the customers themselves considered the manuals to be confidential, with one of them storing the manuals in a locked, closed room inside a facility that required key card access. .

Based on the facts and evidence, the PTAB held that the user manuals were not considered “printed publications”.[s]because Weber failed to demonstrate that these manuals were accessible to “interested and normally qualified” persons. In support of its decision, the PTAB noted that the manuals had only been distributed to 10 unique customers. The PTAB also pointed out that these manuals require confidentiality, as provided for in agreements with purchasers and enshrined in the manuals themselves. The PTAB further observed that the clients themselves had kept these manuals confidential, pointing out that they were kept under lock and key. It should be noted that the PTAB expressly gave less weight to the testimony of Weber employees that customers had access to manuals at trade shows, noting their interest in the outcome of the case.

The result and rationale of Weber v. Provisur are relevant for both lawsuits and litigation. From a patent prosecution perspective, an invention may have been discussed with third parties under confidentiality agreements (eg, nondisclosure agreements) prior to filing. In such scenarios, the scope and confidentiality of these agreements and disclosure must be closely scrutinized. From a litigation perspective, parties should carefully consider whether materials with Weber-like features can be used to challenge patent claims. As of this writing, the PTAB’s decision is subject to appeal.


NOTES

1 Kyocera v. ITC, 891 F.3d 1368 (Fed. Cir. 2018)

2 Cordis Corp. vs. Boston Sci. Corp. 561 F.3d 1319 (Fed. Cir. 2009)

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