They Could Have Found It: Federal Circuit Reverses Board on Public Accessibility

In GoPro, Inc. v. Contour IP Holding LLC, No. 17-1894, 17-1936 (Fed. Cir. July 27, 2018), the Federal Circuit vacated the Board’s determination that a product catalog for digital cameras was not publicly available when the catalog had been distributed at an annual, dealer-only trade show for action sports vehicles.

In an IPR, non-patent literature prior art must qualify as a printed publication, meaning it must be publicly accessible. Prior art is publicly accessible if persons ordinarily skilled and interested in the art could have located it exercising reasonable diligence. In this case, the Board instituted GoPro’s petitions challenging Contour’s patents directed to digital point-of-view cameras for action sports. The instituted obviousness grounds relied on a GoPro catalog, copies of which were distributed at a dealer-only trade show for sports vehicles attended by 150 vendors and 1,000 patrons. Contour argued that the catalog was not publicly accessible and therefore not a printed publication because the trade show was not announced to the public, open to the public, or camera-specific. The Board agreed with Contour, finding that GoPro failed to demonstrate publicly accessibility of the catalog and thus failed to demonstrate that the challenged claims were unpatentable as obvious.

On appeal, the Court held that the Board applied the public-accessibility doctrine too narrowly. The Court reasoned because the cameras were intended for use in rugged, extreme environments, and because they were advertised as having such utility with off-road vehicles, persons of skill interested in point-of-view action cameras would have attended the trade show expecting to find action cameras and accompanying literature. Accordingly, the Court vacated and remanded the Board’s decision.