PTAB to Consider When Conference Materials are Prior Art

June 11, 2018
Post by Blog Staff

In a consolidated appeal from two related Patent Trial and Appeals Board (“PTAB”) decisions, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and vacated-in-part the PTAB’s findings. The CAFC affirmed the PTAB’s conclusion that challenged claims would not have been obvious over two specific references. However, the CAFC vacated the PTAB’s determination that certain other references were not prior art because the PTAB did not fully consider all the factors for determining whether those publications were publicly accessible.

Surgical systems manufacturer Medtronic was sued for patent infringement. Medtronic then petitioned for inter partes review proceedings, which the PTAB instituted, for all claims in the two patents at issue. Medtronic submitted prior art references to assert grounds of obviousness against the claims, but the PTAB found that certain materials, although presented at different industry meetings and conferences, were not publicly accessible and therefore were not “printed publications” in accordance with 35 U.S.C. §102. The PTAB thus refused to consider these materials as prior art and found that a person of ordinary skill would not have found the patent claims obvious over the valid prior art.

The CAFC directs the PTAB to consider on remand the question of whether the distribution of these materials to groups of people at conferences were sufficient to render them as printed publications under §102(b). The CAFC describes certain factors relevant to making such a judgment including the size and nature of the meetings, whether they are open to anyone interested in the subject matter, whether the materials were freely distributed, whether there was an expectation of confidentiality between the distributor and the recipients of the materials, and the expertise of the target audience.

On remand, the PTAB is to determine whether these publications were publicly accessible for prior art purposes and if so, whether they render the challenged claims obvious.

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