2128 “Printed Publications” as Prior Art [R-07.2022]

[Editor Note: For applications subject to the first inventor to file (FITF) provisions of the AIA, see also MPEP §§ 2152.02(b) and 2152.02(e)]

I. A REFERENCE IS A “PRINTED PUBLICATION” IF IT IS ACCESSIBLE TO THE PUBLIC

A reference is proven to be a “printed publication” “upon a satisfactory showing that such document has been 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.” In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981) (quoting I.C.E. Corp. v. Armco Steel Corp., 250 F. Supp. 738, 743, 148 USPQ 537, 540 (SDNY 1966)) (“We agree that ‘printed publication’ should be approached as a unitary concept. The traditional dichotomy between ‘printed’ and ‘publication’ is no longer valid. Given the state of technology in document duplication, data storage, and data retrieval systems, the ‘probability of dissemination’ of an item very often has little to do with whether or not it is ‘printed’ in the sense of that word when it was introduced into the patent statutes in 1836. In any event, interpretation of the words ‘printed’ and ‘publication’ to mean ‘probability of dissemination’ and ‘public accessibility’ respectively, now seems to render their use in the phrase ‘printed publication’ somewhat redundant.”) In re Wyer, 655 F.2d at 226, 210 USPQ at 794. See also Voter Verified, Inc. v. Premier Election Solutions, 698 F.3d 1374, 1380, 104 USPQ2d 1553, 1556-57 (Fed. Cir. 2012) (“the ultimate question is whether the reference was ‘available to the extent that persons interested and ordinary skilled in the subject matter or art[,] exercising reasonable diligence, can locate it’” (citations omitted)).

The Federal Circuit stated the following in Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380, 127 USPQ2d 1208, 1216-17 (Fed. Cir. 2018):

Whether a reference qualifies as a “printed publication” is a legal conclusion based on underlying factual determinations. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (citation omitted). “The ‘printed publication’ provision of § 102(b) ‘was designed to prevent withdrawal by an inventor … of that which was already in the possession of the public.’ ” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (alteration in original) (quoting In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981)); see Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (“This rule is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone.” (internal quotation marks and citations omitted) ). Medtronic, as the patent challenger, bears the burden of establishing that a particular document is a printed publication. See Blue Calypso, 815 F.3d at 1350–51 (holding that petitioner failed to carry its burden of proving public accessibility of the allegedly invalidating reference).

The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) “involves a case-by- case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “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).” Blue Calypso, 815 F.3d at 1348 (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A reference will be 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.’” Id. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).

See also Carella v. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986) (Starlight Archery argued that Carella’s patent claims to an archery sight were anticipated under pre-AIA 35 U.S.C. 102(a) by an advertisement in a Wisconsin Bow Hunter Association (WBHA) magazine and a WBHA mailer prepared prior to Carella’s filing date. However, there was no evidence as to when the mailer was received by any of the addressees. Plus, the magazine had not been mailed until 10 days after Carella’s filing date. The court held that since there was no proof that either the advertisement or mailer was accessible to any member of the public before the filing date there could be no rejection under pre-AIA 35 U.S.C. 102(a).).

When a document is cited in a rejection of a claim in an examination of a patent application or during an reexamination proceeding, an applicant or patent owner may challenge its public availability and/or the date it became publicly accessible, even when the document itself contains a publication date, by filing a proper affidavit or declaration under 37 CFR 1.132 that includes facts and evidence to support the applicant or patent owner’s position. See MPEP § 716et seq.

II. ELECTRONIC PUBLICATIONS AS PRIOR ART

A.Status as a “Printed Publications”

An electronic publication, including an online database or Internet publication (e.g., discussion group, forum, digital video, or social media post), is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) (“Accordingly, whether information is printed, handwritten, or on microfilm or a magnetic disc or tape, etc., the one who wishes to characterize the information, in whatever form it may be, as a ‘printed publication’ … should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.’” (citations omitted).). See also Amazon.com v. Barnesandnoble.com, 73 F. Supp. 2d 1228, 53 USPQ2d 1115, 1119 (W.D. Wash. 1999) (Pages from a website were relied on by defendants as an anticipatory reference (to no avail), however status of the reference as prior art was not challenged.); In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Database printouts of abstracts which were not themselves prior art publications were properly relied as providing evidence that the software products referenced therein were “first installed” or “released” more than one year prior to applicant’s filing date.); Suffolk Tech v. AOL and Google, 752 F.3d 1358, 110 USPQ2d 2034 (Fed. Cir. 2014) (A newsgroup posting constituted prior art as it was directed to those having ordinary skill in the art and was publicly accessible because the post was sufficiently disseminated.)

The Office policy requiring recordation of the field of search and search results (see MPEP § 719.05) weighs in favor of finding that Internet and online database references cited by the examiner are “accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” Wyer, 655 F.2d at 221, 210 USPQ at 790. Office copies of an electronic document must be retained if the same document may not be available for retrieval in the future. This is especially important for sources obtained from the Internet and online databases.

B.Date of Availability

Prior art disclosures on the Internet or on an online database are considered to be publicly available as of the date the item was publicly posted. See subsection I above. Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) or (b). However, it may be relied upon to provide evidence regarding the state of the art. Examiners may ask the Scientific and Technical Information Center to find the earliest date of publication or posting. See MPEP § 901.06(a), subsection IV.G.

C.Extent of Teachings Relied Upon

An electronic publication, like any publication, may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP § 2121.01 and § 2123. Note, however, that if an electronic document which is the abstract of a patent or printed publication is relied upon in a rejection under 35 U.S.C. 102 or 35 U.S.C. 103, only the text of the abstract (and not the underlying document) may be relied upon to support the rejection. In situations where the electronic version and the published paper version of the same or a corresponding patent or printed publication differ appreciably, each may need to be cited and relied upon as independent references based on what they disclose.

D.Internet Usage Policy

See MPEP § 904.02(c) for the portions of the Internet Usage Policy pertaining to Internet searching and documenting search strategies. See MPEP § 707.05(e) for the proper citation of electronic documents.

E.Wayback Machine ^®

The Wayback Machine^® is a digital library maintained by the Internet Archive (a non-profit organization) for viewing information on archived digital Internet webpages. Simply, the Wayback Machine^® uses software programs, known as crawlers, to surf the Internet and automatically store copies of Web objects (Web pages, images, videos, etc.), preserving these objects as they exist at the point and time of capture. These Web objects are stored as Web captures with the capture time/date in the form of a time stamp and the URL of the original website of capture. Accordingly, the Wayback Machine^® provides the ability to view and browse Internet information that may no longer be available on the original website.

Prior art obtained via the Wayback Machine^® sets forth a prima facie case that the art was publicly accessible at the date and time provided in the time stamp. The burden then shifts to the applicant should they wish to challenge the authenticity, reliability or accessibility of such information. See Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374-75, 2021 USPQ2d 867 (Fed. Cir. 2021).

F.Social Media

Social media websites on the Internet, such as YouTube^®, Twitter^®, Facebook^®, and public forum posts, can be a source of prior art, provided the public accessibility requirements, as laid out in subsection I are met. Thus, all information on social media is not necessarily publicly accessible. Public accessibility is determined on a case-by-case basis taking into consideration factors such as, where the information is posted, privacy restrictions placed on the posting, the length of time it was posted, and whether the information is indexed for searching.

Some social media websites are not archived by the Wayback Machine^®. Therefore, examiners may have to rely on the timestamps on the social media sites to establish the public accessibility date. However, the accuracy of timestamps on social media websites may need to be scrutinized with care, as the reliability of some websites do not approach those of other types of Internet publications, such as those providing peer-reviewed material. When a document is cited in a rejection of a claim, an applicant or patent owner may challenge its public availability and/or date that it became publicly available, even where the information self-contains a publication date, by filing a proper affidavit or declaration under 37 CFR 1.132. See MPEP § 716et seq.

For examples of social media website citation formats see MPEP § 707.05(e).

III. EXAMINER NEED NOT PROVE ANYONE ACTUALLY LOOKED AT THE DOCUMENT

There is no need to prove that someone actually looked at a publication when that publication is accessible to the public through a library or patent office. See In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981); In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986). “A reference is considered publicly accessible ‘upon a satisfactory showing that such document has been 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.’ ‘If accessibility is proved, there is no requirement to show that particular members of the public actually received the information.'” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355-1356 (Fed. Cir. 2018) (quoting Wyer, 655 F.2d at 226) and Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569, 7 USPQ2d 1057, 1062-63 (Fed. Cir. 1988)).