On July 27, 2018, in GoPro, Inc., v. Contour IP Holdings LLC, the Federal Circuit overturned the Patent Trial and Appeal Board (“PTAB”) in its most recent decision on what constitutes publicly available prior art. In GoPro the Court held that a catalog distributed at a trade show open only to dealers was publicly available prior art.

Previously, we have reviewed public availability of prior art in two cases. First, the issue was discussed in Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania, IPR2015-01835, where the PTAB held a presentation given to investors was not prior art. The second case was Jazz Pharms., Inc. v. Amneal Pharms., LLC, (Case Nos. 2017-1617, -1673, -1674, -1675, -1676, -1677, -2075), where the Federal Circuit affirmed the PTAB’s finding that FDA Advisory Committee Materials were publicly available prior art.  Here, the Federal Circuit emphasized that the “case law directs [consideration] of the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing information.” GoPro, Inc. at 8.

The patents at issue relate to action sport video cameras or camcorders configured for image acquisition control and viewing, e.g. point of view (“POV”) cameras. Id. at 2. In its Petition, GoPro relied on a GoPro catalog as prior art. Id. at 3-4. GoPro submitted a declaration from GoPro employee Damon Jones. Mr. Jones stated in his declaration that the GoPro catalog was available at the Tucker Rocky Tradeshow, which focuses on action sports vehicles and related products. Mr. Jones stated that “there were approximately 150 vendors and more than 1,000 attendees, including actual and potential dealers, retailers, and customers of portable POV video cameras.” Id. at 4. Moreover, Mr. Jones stated that he was personally at the show and distributed the catalog. In addition to the catalog itself, Mr. Jones attached “a vendor list, and email records supporting [his] statements.” Id. The declaration also included statements about GoPro’s continued distribution of the catalog following the trade show. Id. Contour argued that Tucker Rocky is a “wholesaler that does not sell to the public” and that the dealer show “was open to dealers but not the public.” Id.

In its Final Written Decision, the PTAB found that the catalog was not publicly available because “GoPro had not met its burden to show that the GoPro Catalog was disseminated or otherwise made available to the extent that persons interested in and ordinarily skilled in the subject matter or art and exercising reasonable diligence could have located it.” Id. at 5. The Federal Circuit, disagreed however, and found on de novo review, that the GoPro catalog was publicly available. The Federal Circuit first noted that trade shows are like conferences, and are attended by those interested in new products. Id. at 8. Moreover, the Federal Circuit noted that the trade show’s focus on “action sports vehicles is not preclusive of persons ordinarily skilled in the art from attending to see what POV digital cameras were being advertised and displayed” because “a primary purpose of POV cameras is for use on vehicles in extreme action environments. “ Id. at 8-9. Additionally, the Federal Circuit mentioned that while “the trade show was open to dealers, there is no evidence or indication that any of the material disseminated or the products at the show exclude POV action cameras.” Id. at 9. Instead, the Federal Circuit noted that “the attendees were likely more sophisticated and involved in the extreme action vehicle space than an average customer.” Id. Also, the Court stated that a vendor list includes a “number of vendors who likely sell, produce and/or have a professional interest in digital video cameras.” Id. at 10.

In sum, the Federal Circuit found that “although the general public at large may not have been aware of the trade show, dealers of POV cameras would encompass the relevant audience such that a person ordinarily skilled and interested in POV action cameras, exercising reasonable diligence, should have been aware of the show.” Id. at 10-11. Moreover, “the GoPro catalog was disseminated without restrictions and was intended to reach the general public.” Id. at 11. The Federal Circuit remanded to the PTAB to consider GoPro’s obviousness arguments given this decision.

This case is important for practitioners to consider as it provides additional guidance on how the Federal Circuit and PTAB will analyze public availability of “non-traditional” prior art references.