Public Accessibility: A Fact Intensive Inquiry

Yesterday I highlighted a significant decision for Patent Trial & Appeal Board (PTAB) practitioners pertaining to Real-Party-In-Interest (RPI) and privity determinations, Applications in Internet Time, LLC v. RPX Corporation. In Applications, the Federal Circuit faulted the Board for its narrow analysis of the facts, explaining that a more fact-intensive analysis was in order that takes into consideration the complete record. The Court’s rebuke of the PTAB’s RPI/Privy analyses reminded me of another significant Federal Circuit decision of the last few weeks that will recalibrate established PTAB practices.

In Medtronic, Inc. v. Barry the Court also faulted the Board for its narrow analysis of public accessibility. And, like its decision in Applications, directed the Board to perform a more fact intensive analysis of the entire record.

In these IPR proceedings, Medtronic applied a combination of prior art that included a printed publication referred to as “Video and Slides.” The Board, in its final written decisions, found that the Video and Slides was not prior art because it was not proven to be publicly accessible.

For its part, the Federal Circuit stepped through the relevant legal standards surrounding printed publications and assessed whether the distribution of Video and Slides to groups of people at a series of meetings rendered it publically accessible. In reaching it’s ultimate conclusion, the Court provided a survey of its previous decisions involving distribution of materials at meetings and distilled factors from those cases relevant to this case.(here)

The previous decisions discussed by the Court highlighted some common considerations about materials that are distributed at meetings or conferences. One such consideration was the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed. Another is whether there is an expectation of confidentiality between the distributor and the recipients of the materials. Even if there is no formal, legal obligation of confidentiality, the Court explained it still may be relevant to determine whether any policies or practices associated with a particular group meeting would give rise to an expectation that disclosures would remain confidential.

The Court determined that the PTAB record was too narrowly focused. The Board did not show that it fully considered all of the relevant public accessibility factors. As a threshold matter, the Court held that the Board did not address the potentially-critical differences between a series of meetings in which Video and Slides were distributed. For example, a first meeting in Arizona that appeared to be a closed group, as compared to later programs in Colorado Springs and St. Louis, which were not so limited. Also, Medtronic’s expert, testified that the materials were distributed without restrictions at the Colorado Springs and St. Louis programs. Although the Board found that disclosure to a small group of experts in the first, closed meeting was insufficient to compel a finding that the Video and Slides were publicly available, its analysis was silent on the distribution that occurred in the other two meetings.

Further, the Court noted that even if the Board were correct in its assumption that Medtronic only gave the Video and Slides to the closed group, it did not address whether the disclosures would remain confidential. It may be relevant, for example, to consider the purpose of the meetings and to determine whether the closed group were expected to maintain the confidentiality of received materials or would be permitted to share or even publicize the insights gained and materials collected at the meetings.

The Court also noted that the expertise of the target audience can be a factor in determining public accessibility. But, that this factor alone is not dispositive of the inquiry. Distributing materials to a group of experts, does not, without further basis, render those materials publicly accessible or inaccessible, simply by virtue of the relative expertise of the recipients. The nature of those meetings, as well as any restrictions on public disclosures, expectations of confidentiality, or, alternatively, expectations of sharing the information gained, can bear important weight in the overall inquiry.

As can be appreciated, this case is especially noteworthy for Bio/Pharma PTAB disputes where printed publications are more commonly utilized as prior art.

Public accessibility determinations of the PTAB are especially critical at institution given the lack of appeal right. And, petitioners bear the burden of establishing that a given piece of prior art was publicly accessible. Accordingly, application of the Medtronic factors for such scenarios will be a best practice for petitions going forward.

Scott A. McKeown is an author of the Patents Post Grant.