In Weber v. Provisur, Weber appealed a decision by the Patent Trial and Appeal Board (PTAB) from an inter partes review initiated by Weber, which sought to render all claims of US 10,639,812 and US 10,625,436 unpatentable.  In the inter partes review, the PTAB found in favor of Provisur on all main issues, and Weber appealed to the Federal Circuit.

The patents at issue are directed to industrial meat slicer technology.  Of primary focus was the issue of Printed Publication.  Weber asserted that the distribution of its owner’s manuals with the sales of its industrial meat slicers constituted Printed Publications, and therefore the owner’s manuals could be used as prior art against the patents at issue.  The PTAB found in favor of Provisur on the issue, focusing primarily on a copyright protection clause in the Weber owner’s manual, as well as a confidentiality statement on Weber’s website.  The PTAB concluded that the copyright protection notice as well as the confidentiality statement, created an expectation that the disclosure of the owner’s manual would be kept confidential, and therefore the distribution of the owner’s manual with the sale of the industrial meat slicer was not a Printed Publication.

The Federal Circuit reversed the PTAB.  First, the Federal Circuit concluded that, in this industry, there is no industry expectation that the owner’s manual that is distributed with the sale of a slicer would be kept confidential, and thus the industry norms did not give rise to an expectation of confidentiality.  Second, the PTAB concluded that the copyright protection notice was insufficient to establish that the distribution of the owner’s manual with the sale of the industrial meat slicer was not a Printed Publication.  In this case, the copyright notice was standard, the notice allowed subsequent owners to make copies, and the notice was a simple assertion of the company’s copyright in the underlying material.  Third, the PTAB concluded that the confidentiality agreement on Weber’s website had no bearing on Weber’s public dissemination of operating manuals to owners after completion of a sale.  That is, the confidentiality agreement on Weber’s website controlled pre-sale activity, and did not cover post-sale activity.

Provisur also argued that there were so few distributions of the owner’s manual that it did not constitute a Printed Publication.  In particular, Provisur argued that fewer than 40 distributions of the owner’s manual occurred.  The Federal Circuit disagreed.  The Federal Circuit further indicated that there is “no minimum number of occasions of access that is dispositive of the public accessibility inquiry in all cases.”

Provisur additionally argued that due to the high-cost of the industrial meat slicers and limited number of interested parties, that the distribution of owner’s manuals could not constitute a Printed Publication.  The Federal Circuit disagreed.  The Federal Circuit further elaborated that cost alone cannot be dispositive on the issue because “the printed-publication inquiry is focused on the interested public, not the general public.”  In this case, the “interested public” includes commercial entities that can afford high-cost slicers.

Thus, a disclosure is likely to qualify as a Printed Publication when it is distributed in a manner that makes it accessible to the interested public.  Industry norms, academic norms, and other well-established standards within a particular industry or field may give rise to an expectation of confidentiality of a disclosure, such that the disclosure may not qualify as a Printed Publication.  In this case, however, the record did not establish any such norm existed.  Furthermore, a standard form copyright notice, as well as a confidentiality agreement directed to conduct unrelated to post-sale activity, is not likely to create such an expectation of confidentiality, particularly in post-sale activity.