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Do operating manuals qualify as “printed publications” under patent law?
It’s well established that existing patents can render an invention unpatentable for obviousness. But patents aren’t the only kind of “prior art” that can undermine patentability. Other printed publications — including operating manuals prepared for customers — also might invalidate an invention’s patent.
Meat of the matter
Provisur Technologies owns two patents related to high-speed mechanical slicers used in food-processing plants. It sued Weber for infringing the patents.
In response, Weber sought inter partes review (IPR) of the patents. Under IPR, the Patent Trial and Appeal Board (PTAB) can reconsider and cancel an already-issued patent based on certain types of prior art. The PTAB’s final decision is subject to review by the U.S. Court of Appeals for the Federal Circuit.
Weber contended that the patents were obvious based in part on operating manuals for its commercial food slicer. The manuals were created and disseminated to accompany and explain how to use the products.
The PTAB found the manuals didn’t qualify as printed publications. It noted that they were distributed to only 10 unique customers and subject to confidentiality restrictions. The confidentiality finding was based on the PTAB’s interpretation of the manuals’ copyright notice and an intellectual property rights clause in Weber’s terms and conditions underlying the sale of each slicer product.
In the end, the PTAB concluded that Weber hadn’t proved unpatentability. Weber then appealed to the Federal Circuit.
Sliced and diced
Patent law defines “printed publication” — for purposes of determining whether an invention has the requisite novelty — to mean material “sufficiently accessible to the public interested in the art.” The touchstone is public accessibility. In other words, can interested members of the relevant public locate the reference by exercising reasonable diligence?
The appeals court faulted the PTAB’s printed publication analysis in this case. The court said, among other things, that no minimum number of occasions of access is decisive as to the public accessibility question.
It explained that, where a publication’s purpose is to interact with the intended audience, the purpose indicates public accessibility. Weber’s operating manuals were created for distribution to the interested public to provide instructions on how to assemble, use, clean and maintain the slicer, as well as how to address malfunctions. Weber employees testified that the manuals could be obtained with the purchase of a slider or on request of an employee.
The court rejected Provisur’s argument that the slicer’s high cost prevented the manuals from being sufficiently accessible by reasonable diligence. Cost alone wasn’t dispositive because the analysis focuses on the interested public, not the general public. And the interested public included commercial entities that could afford pricey slicers.
The final cut
The Federal Circuit reversed the printed publication determination and vacated the PTAB’s conclusions regarding patentability. The case was sent back for further proceedings, leaving Provisur’s patents vulnerable.
From the August/September 2024 Cantor Colburn IP Newsletter © 2024
