Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) finding certain claims of U.S. Patent No. 8,714,977 (“the ’977 Patent”), directed to dental implants, unpatentable as anticipated. The Nobel decision is the latest in a recent line of Federal Circuit cases holding that materials distributed at conferences, trade shows, and meetings are publically available “printed publications” within the meaning of pre-AIA 35 U.S.C. § 102(b).
In this most recent case, Instradent, the IPR petitioner, had alleged that certain claims of the ’977 Patent were unpatentable as anticipated by a product catalogue from Alpha-Bio Tech Ltd. (“ABT”), dated March 2003. The ’977 Patent claims a priority date from an application filed on May 23, 2004, and has a “critical date” of May 23, 2003, which the product catalogue preceded. The catalogue disclosed a 5 mm SPI dental implant screw, which Instradent argued taught each element of challenged claims. The Petitioner, Instradent, alleged that the catalogue had been distributed at the International Dental Show (“IDS”), which was held in Cologne, Germany, in March 2003.
The Federal Circuit affirmed the Board’s “determin[ation] that a preponderance of the evidence establishe[d] that the ABT catalogue qualifie[d] as a prior art printed publication under [pre-AIA] 35 U.S.C. § 102(b).” Although a panel of the Federal Circuit had previously affirmed the International Trade Commission’s finding that the respondent, Instradent, had not shown by clear and convincing evidence that the ABT catalogue was not prior art, here the Court noted that it was not bound by its prior ruling, as the burdens of proof were different, and Instradent’s challenge in the IPR was supported by additional evidence.
To establish that the ABT catalogue was publically available in March 2003, Instradent offered evidence that the founder and CEO of ABT, Ophir Fromovich, who was one of the inventors of the ’977 Patent, attended the IDS in March 2003, where ABT had a small booth. Although Fromovich was equivocal as to whether he distributed the March 2003 ABT catalogue, Instradent offered corroborating testimony from two witnesses, Yechiam Hantman and Zvi Chakir, who as of March 2003, were co-owners of Chakir Implants, Ltd. Hantman and Chakir’s testimony established that after the 2003 conference, Chakir provided Hantman dental implant-related materials from the IDS, including a copy of the March 2003 ABT catalogue, which Hantman had retained in his possession. The Federal Circuit determined that the witness testimony of Chakir and Hantman, a copy of the ABT catalogue, and Fromovich’s own testimony all sufficiently corroborated Chakir and Hantman’s recollection of receiving the ABT catalogue at the IDS event.
In the decision, the Federal Circuit rejected Nobel’s assertion that Chakir could have obtained the ABT catalogue “confidentially or under oath circumstances that would not legally constitute public accessibility,” as Chakir’s testimony established that gathering product literature at the IDS was “open to everyone” and that “such materials were ‘outside [the booth such] that everyone on the corridor can take them.’” Moreover, the Panel found it significant that Nobel failed to present “evidence that ABT ever distributed the ABT Catalog with an expectation that it would be kept confidential and not disseminated.” Finally, it was undisputed on appeal that the ABT catalogue was the type of document intended for public dissemination, as it bore no designations, such as “draft,” to signal otherwise. Thus, the Federal Circuit concluded that the Board’s determination that the ABT catalogue was publically available in March 2003 was supported by substantial evidence.
The Federal Circuit in Nobel reaffirmed that public accessibility is the key inquiry in determining whether a “printed publication” is prior art under pre-AIA § 102(b). The Court also noted that “there are many ways in which a reference may be disseminated to the interested public.” Despite the Court’s ultimate decision in Nobel and other recent cases, public accessibility remains highly fact-specific and is “determined on a case-by-case basis based on the ‘facts and circumstances surrounding the reference’s disclosure to members of the public.’” In this particular case, the Court found sufficient corroboration of public accessibility based on compelling evidence that included testimony from three witnesses, including a third-party representative who had received and maintained a copy of the alleged prior art before the patent’s critical date.