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Absent Evidence of Cataloging Date, a Reference Registered at the Copyright Office and Cataloged in Commercial Databases May Not Be “Publicly Accessible” Prior Art

September 22, 2009

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Last Month at the Federal Circuit - October 2009

Judges: Gajarsa, Linn, Prost (author)

[Appealed from: Board]

In In re Lister, No. 09-1060 (Fed. Cir. Sept. 22, 2009), the Federal Circuit vacated and remanded the Board’s decision that a prior art reference registered with the U.S. Copyright Office (“Copyright Office”) and listed in the Westlaw and Dialog databases was publicly accessible for the purposes of 35 U.S.C. § 102(b).

More than two years before Dr. Richard Lister filed an application with the PTO on a method for playing golf, he described the method in a manuscript, submitted the manuscript to the Copyright Office, and received a certificate of registration. In the most recent final rejection of the application, the examiner rejected the pending claims as anticipated by Dr. Lister’s manuscript (“the Lister manuscript”) under 35 U.S.C. § 102(a) and (b).

Dr. Lister appealed to the Board, which reversed the § 102(a) rejection because that subsection requires description in a printed publication prior to the date of invention, and “[Dr.] Lister could not have disclosed his own invention before he invented it.” Slip op. at 3 (alteration in original). Regarding § 102(b), the Board concluded that the copyright registration for the manuscript was issued more than one year prior to Dr. Lister’s application date. The Board further found that the manuscript was publicly accessible through the Copyright Office, and affirmed the § 102(b) rejection.

On appeal, the Court evaluated whether the Lister manuscript met the requirements for a “printed publication.” The Court first noted that a reference must have been sufficiently accessible to the public interested in the art in order to qualify as a printed publication bar under § 102(b). The Court stated that a reference is publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. at 6 (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (2008)). The Court explained that it must consider all facts and circumstances surrounding the disclosure and determine whether an interested researcher would have been sufficiently capable of finding the reference and examining its contents.

The parties agreed that the manuscript disclosed the claimed invention, that the Copyright Office issued a certificate of registration for the Lister manuscript more than two years before the application filing date, and that the Copyright Office maintained a copy of the manuscript in Washington, DC. It was also undisputed that a copy of the manuscript was available upon request to be inspected by the public and that, absent limited special circumstances, the Copyright Office would neither provide copies of the manuscript nor permit individuals inspecting the document to make copies themselves. However, the parties disputed when, and if, the manuscript was listed in a catalog or index that would have allowed an interested researcher to locate the reference.




The Court first considered whether the manuscript was available for inspection, and disagreed with Dr. Lister’s first argument that the burden of traveling to Washington, DC, and navigating the Copyright Office’s procedures would preclude a finding of general availability. The Court found that any member of the public who submits a proper request is capable of gaining access to the manuscript, and that a reference can be publicly accessible, even if significant travel is required. Further, the Court held that it is not necessary to show that anyone actually inspected the reference once accessibility is shown. Finally, the Court agreed with the Board’s conclusion that an interested researcher would be able to gain and retain an understanding of the invention upon inspection of the manuscript and without any need to obtain a copy.

After establishing that the Lister manuscript was available for inspection, the Federal Circuit considered whether anyone would have beenable to learn of its existence and potential relevance prior to the critical date. The Court first addressed Dr. Lister’s argument that the catalogs and databases relied upon by the Board were not sufficiently searchable to lead an interested researcher to the manuscript. In particular, the Court noted that there were three relevant databases: the Copyright Office’s automated catalog, Westlaw, and Dialog. The Copyright Office’s catalog was searchable only by author’s last name or the first word of the work’s title, while Westlaw and Dialog obtained data from the Copyright Office and allowed for keyword searches of the full titles but not the full texts of the works.

Regarding the Copyright Office’s catalog, the Court found that neither searching by author nor the first word in the title (“Advanced”) would guide a researcher interested in his golfing method to the manuscript. But the Court found that because the Westlaw and Dialog databases permit searching of titles by keyword, a reasonably diligent researcher could have found the manuscript by searching for the word “golf” in combination with the word “handicap.” Thus, the Court decided that the Lister manuscript was publicly accessible as of the date that it was included in either Westlaw or Dialog.

Finally, the Court addressed whether the Lister manuscript was publicly accessible in Westlaw or Dialog more than one year prior to the critical date. According to M.P.E.P. § 2128, absent evidence of The public posting date, disclosures on the Internet or on an on-line database cannot be relied upon as prior art under 35 U.S.C. § 102(a) or (b) if the publication itself does not include a publication date or retrieval date. The Court rejected the government’s arguments regarding the Lister manuscript’s public posting date.

The Court rejected the government’s reliance on Dr. Lister’s IDS statement that “[t]he information contained in [the commercial] databases comes directly from the Library of Congress.” Id. at 15. According to the Court, the word “directly” did not indicate that the manuscript was listed in Westlaw or Dialog shortly after the Copyright Office issued Dr. Lister’s certificate of registration, as asserted by the government. The Court reasoned that Westlaw or Dialog could acquire the catalog information “directly” ten years after it was first generated for the Copyright Office catalog. Further, the Court noted that there was no other evidence regarding the timing or process used by Westlaw or Dialog to incorporate the Copyright Office’s information. Absent such evidence, the Court determined that it could not conclude that the manuscript was publicly accessible prior to the critical date.

The Court also rejected the government’s argument that it made a prima facie showing that the manuscript was included in the commercial databases shortly after the Copyright Office granted the certificate of registration that justified shifting the burden to Dr. Lister to present evidence to the contrary. The Court found that all the evidence showed was that, at some point in time, the commercial databases incorporated the Copyright Office’s automated catalog information about the Lister manuscript into their own databases. The Court concluded that, absent any evidence pertaining to the general practices of Westlaw and Dialog regarding the timing of updates from the Copyright Office, the government’s presumption that the manuscript was added to Westlaw and Dialog prior to the critical date would be pure speculation. Accordingly, the Court ruled that the Board erred in affirming the § 102(b) rejection.