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September 23, 2009

Teed Off

Dr. Richard S. Lister came up with the idea of letting golfers tee fairway balls "to obtain better scores in a shorter time." In 1994, pro se, he submitted a manuscript to the Copyright Office. Two years later he caught wind that he needed to file a patent. He's been fighting the patent office ever since, as they insist his copyrighted manuscript constitutes publically accessible prior art. His rejoinder is that it was never public. Lister finally got to the court of appeals.

In re Richard S. Lister (CAFC 2009-1060) precedential

While accessibility is indicated by having documents cataloged and indexed, they may be otherwise accessible. Like pornography, the court knows accessibility when they see it.

Section 102(b) is a bar to patentability if "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States." 35 U.S.C. § 102(b). "The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone." Hall, 781 F.2d at 898.

In order to qualify as a printed publication within the meaning of § 102, a reference "must have been sufficiently accessible to the public interested in the art." Cronyn, 890 F.2d at 1160 (quoting Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988)). "Because there are many ways in which a reference may be disseminated to the interested public, 'public accessibility' has been called the touchstone in determining whether a reference constitutes a 'printed publication' bar under 35 U.S.C. § 102(b)." Hall, 781 F.2d at 898-99. Whether a reference is publicly accessible is determined on a case-by-case basis based on the "facts and circumstances surrounding the reference's disclosure to members of the public." Klopfenstein, 380 F.3d at 1350. A reference is considered publicly accessible if it was "disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it." Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340, 1350 (2008) (quotation marks omitted).

Prior cases have looked to a variety of factors when considering whether a reference was publicly accessible. In several cases involving references stored in libraries, we have considered whether the research tools available would have been sufficient to permit an interested researcher to locate and examine the reference. In Hall, for example, we held that a dissertation shelved in the stacks and indexed in the catalog at the Freiburg University library was a printed publication. 781 F.2d at 898, 899-90. In contrast, the thesis at issue in In re Bayer was held not to have been publicly accessible as of the critical date because at that time it was uncataloged, unshelved, and could have been found in the library at the University of Toledo "only by one having been informed of its existence by the [author's] faculty committee, and not by means of the customary research aids available in the library." 568 F.2d 1357, 1361 (CCPA 1978).

Prior cases have looked to a variety of factors when considering whether a reference was publicly accessible. In several cases involving references stored in libraries, we have considered whether the research tools available would have been sufficient to permit an interested researcher to locate and examine the reference. In Hall, for example, we held that a dissertation shelved in the stacks and indexed in the catalog at the Freiburg University library was a printed publication. 781 F.2d at 898, 899-90. In contrast, the thesis at issue in In re Bayer was held not to have been publicly accessible as of the critical date because at that time it was uncataloged, unshelved, and could have been found in the library at the University of Toledo "only by one having been informed of its existence by the [author's] faculty committee, and not by means of the customary research aids available in the library." 568 F.2d 1357, 1361 (CCPA 1978).

While cataloging and indexing have played a significant role in our cases involving library references, we have explained that neither cataloging nor indexing is a necessary condition for a reference to be publicly accessible. See Klopfenstein, 380 F.3d at 1348 ("[Our cases] do not limit this court to finding something to be a 'printed publication' only when there is distribution and/or indexing."). Depending on the circumstances surrounding the disclosure, a variety of factors may be useful in determining whether a reference was publicly accessible. See, e.g., id. at 1350 (listing four factors relevant to whether a slide presentation was a printed publication); Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1379 (Fed. Cir. 2006) (explaining that an application that resulted in the issuance of a published Canadian patent was publicly accessible because the issued patent served as a "roadmap to the application file"); see also id. at 1380 (Linn, J., dissenting) (opining that the application was not publicly accessible because "the text of an issued patent does not generally serve to guide researchers to the file history for a more expansive disclosure of the described invention, and it certainly does not lead researchers to the file history for disclosure of subject matter not described in the issued text"). In short, we must consider all of the facts and circumstances surrounding the disclosure and determine whether an interested researcher would have been sufficiently capable of finding the reference and examining its contents.

Copyright documents aren't very accessible, at least from the copyright office.

Several of the facts that are pertinent to our public accessibility analysis are not in dispute. First, the parties agree that the Lister manuscript discloses the claimed invention. Next, it is undisputed that the Copyright Office issued a certificate of registration for the Lister manuscript on July 18, 1994. It is also undisputed that the Copyright Office retained a copy of the manuscript in Washington, D.C., that was available upon request to be inspected by the public. Additionally, the parties agree that, absent limited special circumstances, the Copyright Office will neither provide copies of the manuscript nor permit individuals inspecting the document to make copies themselves.1 However, the parties do not agree as to when, if ever, the manuscript was listed in a catalog or index that would have permitted an interested researcher to learn of its existence and locate it for inspection.

1 Under 37 C.F.R. § 201.2(d)(2), the Copyright Office will provide copies of copyrighted works in only three circumstances: (1) the copyright holder provides written authorization; (2) a written request is filed by an attorney representing either a plaintiff or defendant in connection with litigation relating to the copyrighted work; or (3) the Copyright Office receives a court order for reproduction of a work that is the subject of litigation.

To the threshold of accessibility -

The question is not whether an individual, selecting terms from the claim language, could execute a single keyword search that would yield all relevant references including the anticipatory reference at issue. Rather, our inquiry is whether it could be located by "persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence." Kyocera, 545 F.3d at 1350 (emphasis added) (quotation marks omitted). A reasonably diligent researcher with access to a database that permits the searching of titles by keyword would be able to attempt several searches using a variety of keyword combinations.

There are three databases for searching copyrights. The government's database is next to useless, but of course good enough for government work.

There are three relevant databases, the Copyright Office's automated catalog and two commercial databases, Westlaw and Dialog. The automated catalog was not sorted by subject matter and could only be searched by either the author's last name or the first word of the title of the work. Westlaw and Dialog obtained the automated catalog data from the Copyright Office and entered it into their own databases. Users of the Westlaw and Dialog databases could perform keyword searches of the titles, but not the full texts, of the works.

[W]e conclude that the Lister manuscript was publicly accessible as of the date that it was included in either Westlaw or Dialog, the databases that permitted keyword searching of titles.

As with so many things, timing is everything. In this case, there was no clock in sight.

[T]here is no... evidence that speaks to the timing or process by which Westlaw or Dialog incorporated the Copyright Office's updated automated catalog information into their databases. Although "evidence establishing a specific date of cataloging" was not required in Hall, in that case we held that "competent evidence of the general library practice" of cataloging and shelving established that the thesis became accessible prior to the critical date. 781 F.2d at 899. In contrast, in this case the government has not identified any evidence of the general practice of the Copyright Office, Westlaw, or Dialog with regard to database updates. Absent such evidence, we have no basis to conclude that the manuscript was publicly accessible prior to the critical date.

At least the patent office is consistent: always ready to condemn patent applications regardless of evidence or lack thereof.

Because the evidence contained in the IDS neither provides substantial evidence that the Lister manuscript was publicly accessible as of the critical date nor suffices to prove a prima facie case of accessibility that would shift the burden to Dr. Lister to show inaccessibility, we conclude that the Board erred in affirming the examiner's § 102(b) rejection.

Vacated and remanded.

An aside to be careful what you ask for, which in this case meant not asking for enough early on.

Citing the thirteen-year pendency of his application, Dr. Lister also asks us to issue an order requiring the USPTO to conclude prosecution and issue a notice of allowance. Dr. Lister did not argue to the Board that the allegedly excessive delays during prosecution entitle him to the issuance of a patent. Accordingly, that issue is not properly before us. See In re Watts, 354 F.3d 1362, 1367-68 (Fed. Cir. 2004). Additionally, we note that our decision is limited to the question of whether the Board properly affirmed the examiner's § 102(b) rejection. Other bars to patentability are not before us and may be raised during the proceedings on remand.

Posted by Patent Hawk at September 23, 2009 9:32 AM | Prior Art