The Federal Circuit recently held that a product catalog distributed at a trade show was “publicly accessible,” and therefore qualified as prior art. In Nobel Biocare Services AG, v. Instradent USA, Inc., decided on September 13, 2018, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) finding that a catalog distributed at the International Dental Show (“IDS”) Conference in Cologne, Germany was publicly accessible. The court’s decision in Nobel hinged largely on the testimony of two declarants, one who went to the conference (Zvi Chakir), and another who Chakir gave the catalog to upon his return (Yechiam Hantman).
Recently, the Federal Circuit has been looking at public availability of prior art with some frequency, as we have previously reviewed. See Coalition for Affordable Drugs VIII, LLC v. The Trustees of the Univ. of Penn., IPR2015-01835 (PTAB held a presentation given to investors was not prior art); Jazz Pharms., Inc. v. Amneal Pharms., LLC, (Case Nos. 2017-1617, -1673, -1674, -1675, -1676, -1677, -2075) (affirming the PTAB’s finding that FDA Advisory Committee Materials were publicly available prior art); GoPro, Inc. v. Contour IP Holdings, LLC, (Case No. Case Nos. 2017-1894, -1936) (affirming PTAB finding that a catalog distributed at a trade show open only to dealers was publicly available).
In Nobel, at issue was a patent relating to dental implants. The patent was first challenged in proceedings at the International Trade Commission (“ITC”). In that case, Defendant Instradent argued that a product catalog made by the inventor’s company (the “ABT Catalog”) anticipated the patent claims. During the ITC proceedings, the inventor testified that the date on the cover of the catalog coincided with the IDS conference, because it was “one of the biggest for distribution in Europe.” Nobel at 6. The inventor further testified that he did not recall whether he brought the ABT Catalog to the conference, and if he did, it would have been a small number. Id. The ITC, under a “clear and convincing” evidence standard, found the catalog had not been proven to be prior art. Id. at 7. The Federal Circuit affirmed without decision. Although Instradent was unsuccessful before the ITC and on subsequent review by the Federal Circuit, those were not its only bites at the apple.
During the same time frame, Instradent petitioned the PTAB for review of certain claims of the same patent. Instradent argued that the same ABT catalog anticipated the claims. In front of the PTAB, there was additional evidence related to public availability, however. Id. at 8-9. The PTAB considered testimony of Chakir and Hantman. Chakir and Hantman explained that it was Hantman’s “specific goal” to “collect materials . . . from the IDS trade show describing the . . . implant.” Id. at 8. However, Hantman was unable to attend the conference, and he requested Chakir collect catalogs from competitors and provide them to him. Id. Chakir explained that he did this, and that the catalogs were available to everyone, and not a secret. Id. at 9. Based on this testimony, along with the date printed on the catalog, the PTAB found the catalog was publicly available prior art. The PTAB specifically noted it was not bound by the ITC decision, and it was applying its own burden of proof.
Illustrating that the standard of review often matters, the Federal Circuit reviewed the evidence presented to the PTAB and concluded that the PTAB’s holding was supported by substantial evidence, as opposed to the clear and convincing standard applicable at the ITC. The Federal Circuit noted that the PTAB reasonably credited Hantman and Chakir’s testimony, reviewed the date on the cover, and found no evidence was presented that suggested the catalog was to be kept confidential. Id. at 14-17. The Federal Circuit also found that Hantman and Chakir’s testimony was sufficiently corroborated by each other, and by the date on the catalog.
For practitioners, the primary lesson of Nobel is that where items are distributed without an expectation of confidentiality, there is a substantial chance that the Federal Circuit will uphold a finding of public availability. Nobel also highlights that presenting new or additional evidence to the PTAB, and under a different burden of proof, may lead to a different result.