Confidential Manual Deemed Not A Printed Publication

By Alison Ibendahl and Joe Beauchamp –

In a recent decision, the Patent Trial and Appeals Board found that no claims challenged were unpatentable, after finding manuals relied upon as prior art did not qualify as “printed publications” under 35 U.S.C. § 311(b).  Weber, Inc. v. Provisur Technologies, Inc., IPR2020-01556, Paper 67 (March 31, 2022). The Patent Owner, Provisur, argued that Petitioner Weber’s manuals were not printed publications because they were maintained as confidential, and the manuals only had a limited distribution.  Concluding that Weber failed to establish by a preponderance of the evidence that its operating manuals constitute printed publications, the PTAB held that no challenged claims were unpatentable.

Weber filed a Petition for inter parte review of claims 1–16 of U.S. Patent No. 10,625,436 (“the ’436 patent”).  The ’436 patent is currently owned by Provisur Technologies and claims a type of food slicer.  The parties are also engaged in district court litigation involving the ’436 patent.  See Provisur Technologies, Inc. v. Weber, Inc. et al, Case No. 5-20-cv-06069 (W.D. Mo., filed May 6, 2020).  Weber challenged the claims of the ’436 patent as separately unpatentable over its 2006 904 Operating Manual (“the 2010 Manual”) and 2010 904 Operating Manual (“the 2010 Manual”) when combined with the Lindee reference.

A key dispute was whether Weber had adequately shown that the manuals qualified as “printed publications” within the requirements of 35 U.S.C. § 311(b).  Weber argued its manuals qualified as printed publications because they were included in over 50 shipments of food slicers.  Weber also alleged that the manuals were available to the public upon request and available for inspection at trade shows.  In response, Provisur argued that the manuals were not printed publications because the manuals provided with the food slicers were marked confidential and that it was industry custom to treat the manuals as being confidential.  Provisur also argued that Weber had failed to provide evidence of any policy providing interested persons with access to the manuals.

A reference qualifies as a printed publication if it is accessible through reasonable diligence of an interested person of ordinary skill in the art.  Under Cordis Corp. v. Boston Sci. Corp., “where a distribution is made to a limited number of entities, a binding agreement of confidentiality may defeat a finding of public accessibility.”  561 F.3d 1319, 1333 (Fed. Cir. 2009).  The Board began by analyzing if the manuals had been distributed beyond a limited number of entities.  In line with Cordis, the Board analyzed how many unique entities received the manuals instead of how many total manuals were sent out.  Weber’s documentary evidence showed that only 10 unique entities had received manuals, leading the Board to hold that distribution was not beyond a limited number of entities.

The Board then found that the manuals were confidential based on inscriptions contained on the manuals and the “Terms and Conditions” associated with the food slicer orders.  With respect to the manuals, the Board specifically noted that inscriptions on the manuals required confidentiality because the terms prohibited transfer of the manuals in any way, absent “the written authorization” of Weber, and allowed copying only for internal use.  With respect to the “Terms and Conditions” associated with the sales of the slicers, the Board found the manuals stated that Weber retained all proprietary rights in anything provided to the customer.  The Terms and Conditions also required immediate return of any supplied manuals in the event a sale fell through.

The Board finally found that Weber presented insufficient evidence that the 2006 Manual and 2010 Manual were accessible to the interested public.  Weber attempted to contextualize the documentary evidence through witnesses.  However, the Board found the testimony unpersuasive, reasoning that the witnesses were each Weber employees who had an interest in the outcome of the proceeding and that the witnesses at times gave testimony that conflicted with the documentary evidence.  The Board ultimately found that the challenged claims were not unpatentable as obvious, in part because the 2006 Manual and 2010 Manual were not invalidating printed publications.

Takeaway

This opinion illustrates some of the pitfalls that may arise when relying on a manual as an invalidating printed publication.  When considering using a manual as a printed publication, the scope of distribution and potential confidentiality arguments should be analyzed.  Petitioners should also be prepared to produce documentary evidence, or at the very least, be able to produce disinterested witnesses that corroborate any arguments against a finding of confidentiality.