Gopro, Inc. v. Contour IP Holding LLC
Opinion of the Court
GoPro, Inc. appeals from final written decisions of the Patent Trial and Appeal Board in two inter partes review proceedings. In the proceedings, the Board found that the petitioner, GoPro, did not demonstrate that the challenged claims are unpatentable as obvious. The Board based this decision on its conclusion that a certain GoPro catalog is not a prior art printed publication. We disagree. We vacate and remand for further proceedings consistent with this opinion.
BACKGROUND
A. The '954 patent and '694 patent
Contour IP Holding LLC owns U.S. Patent Nos. 8,890,954 ("the '954 patent") and 8,896,694 ("the '694 patent"). The patents share a common specification that generally relates to and describes action sport video cameras or camcorders that are configured for remote image acquisition control and viewing.
Both the '954 and '694 patents claim priority to a provisional application filed on September 13, 2010. Thus, the one-year critical date is September 13, 2009.
B. Proceedings Before the Board
GoPro petitioned for inter partes review ("IPR") of the '954 and '694 patents on April 20, 2015. GoPro challenged the patentability of claims 1-30 of the '954 patent and claims 1-20 of the '694 patent on obviousness grounds, relying on a 2009 GoPro sales catalog ("the GoPro Catalog") as prior art in each petition. The GoPro Catalog discloses a digital camera linked to a wireless viewfinder/controller that allows for a user preview before recording. The Board instituted both IPRs on October 28, 2015, as IPR2015-01080
In its decisions to institute, the Board found that GoPro made a threshold showing that the GoPro Catalog is prior art. In reaching this determination, the Board concluded that a person of ordinary skill in the art would have had at least a bachelor's degree in computer science, electrical engineering, or a similar discipline, and some experience creating, programming, or working with digital video cameras, such as point of view ("POV") action sports video cameras. Critical to its decision, the Board credited a declaration from GoPro employee, Damon Jones, relating to the distribution of the GoPro Catalog. Mr. Jones worked at GoPro from 2008 to 2016 and participated in various trade organizations relevant to GoPro's business. This included Tucker Rocky Distributing ("Tucker Rocky"), a trade organization focused on action sports vehicles as well as related apparel, parts, and accessories.
In his declaration, Mr. Jones testified that Tucker Rocky holds an annual dealer trade show, which he attended in Fort Worth, Texas, from July 23 through July 27, 2009, on GoPro's behalf. Mr. Jones also testified that at the 2009 show, there were approximately 150 vendors and more than 1,000 attendees, including actual and potential dealers, retailers, and customers of portable POV video cameras. Mr. Jones stated that he manned the GoPro booth at the show, where the GoPro Catalog was displayed, and that he personally distributed the GoPro Catalog to attendees. Attached to Mr. Jones's declaration, GoPro provided the catalog, a vendor list and map of the Tucker Rocky 2009 show, and email records supporting Mr. Jones's statements. The declaration from Mr. Jones also included testimony that GoPro continued to make the GoPro Catalog available to GoPro's actual and potential customers, dealers, and retailers through its website, direct mail, and other means of distribution. During the proceedings, GoPro submitted a supplemental declaration from Mr. Jones to support statements from his first declaration.
In its Patent Owner Responses, Contour argued that GoPro had not demonstrated that the GoPro Catalog was a prior art printed publication. To support its argument, Contour submitted two pieces of evidence-a screenshot from Tucker Rocky's website from 2009 and a Facebook webpage for the 2013 Tucker Rocky Dealer Show. The 2009 website screenshot explained that Tucker Rocky is a wholesale distributor that does not sell to the public. The 2013 Facebook page stated that the 2013 Tucker Rocky Dealer Show was open to dealers but not the public. Contour did not depose Mr. Jones.
*693In its final written decisions, the Board concluded that the GoPro Catalog did not qualify as a prior art printed publication under
GoPro timely appealed from these final written decisions to this court. We have jurisdiction pursuant to
DISCUSSION
Whether a reference constitutes a printed publication under
Section 102(b) provides that a person shall be entitled to a patent unless the invention was described in a printed publication more than one year prior to the date of application for patent in the United States. The printed publication rule is based on the principle that once an invention is in the public domain, it can no longer be patented by anyone. Blue Calypso, LLC v. Groupon, Inc. ,
We have interpreted § 102 broadly, finding that even relatively obscure documents qualify as prior art so long as the relevant public has a means of accessing them. See, e.g. , Jazz Pharm., Inc. v. Amneal Pharm., LLC ,
*694The parties do not dispute any of the facts or evidence presented by GoPro regarding the distribution of its catalog. In addition, there is no dispute that the Tucker Rocky Dealer Show occurred before the critical date of the '954 and '694 patents. See
The Board found all the evidence presented by GoPro credible,
We disagree with the Board's conclusion that the evidence presented by GoPro failed to satisfy the § 102(b) requirements. The case law regarding accessibility is not as narrow as the Board interprets it. The Board focused on only one of several factors that are relevant to determining public accessibility in the context of materials distributed at conferences or meetings. The Board cited no cases where we have strictly held that the expertise of the target audience is dispositive of the inquiry of accessibility. Cf. Medtronic v. Barry ,
Trade shows are not unlike conferences-a trade show is directed to individuals interested in the commercial and developmental aspects of products. If one desires to examine certain new products on the market, attending a trade show involving identical or similar products is a good option. Mr. Jones testified that Tucker Rocky holds an annual trade show that draws thousands of attendees. In 2009, GoPro participated in the Tucker Rocky Dealer Show as a vendor and had a demonstration booth at the show. Mr. Jones personally attended the show on behalf of GoPro and operated the demonstration booth. He testified that there were over 150 vendors, 1,000 attendees, and that GoPro displayed and distributed hundreds of copies of the GoPro Catalog to attendees *695at the show without restriction.
The fact that the dealer show is focused on action sports vehicles is not preclusive of persons ordinarily skilled in the art from attending to see what POV digital cameras were being advertised and displayed. As described in the patents, a primary purpose of POV cameras is for use on vehicles in extreme action environments, such as the ones advertised at the Tucker Rocky Dealer Show.
Although the trade show was only open to dealers, there is no evidence or indication that any of the material disseminated or the products at the show excluded POV action cameras, or information related to such cameras. This is especially true in light of the evidence that Tucker Rocky is a trade organization directed to action sports vehicles and accessories related thereto. J.A. 4319.
The Board concluded that the GoPro Catalog was not a printed publication because the Tucker Rocky Dealer Show was not open to the general public
Because the Board refused to accept the GoPro Catalog as a printed publication, it did not consider the merits of GoPro's obviousness claims. See J.A. 61 ("[Since GoPro] has not established that the GoPro *696Catalog is a prior art printed publication under
CONCLUSION
We vacate the Board's decision that claims 1-20 of the '694 patent and claims 1, 2, and 11-30 of the '954 patent are not unpatentable and remand for further proceedings consistent with this opinion.
VACATED AND REMANDED
COSTS
No costs.
Neither the claim terms nor the claimed inventions are at issue in this appeal.
The Board instituted the IPR as to claims 1, 2, and 11-30 of the '954 patent. J.A. 499.
Because the '954 and '694 patents each have an effective filing date before the effective date of the Leahy-Smith America Invents Act ("AIA"), references are to the pre-AIA version of
See '694 FWD , at 23 n.9 ("Patent Owner did not cross-examine Mr. Jones, and does not point to any reason to doubt the veracity of his testimony. The only issue, therefore, is whether his testimony and cited exhibits are sufficient for Petitioner to meet its burden to prove that the GoPro Catalog is a prior art printed publication.").
Mr. Jones also submitted a supplemental declaration testifying that the GoPro Catalog was made available through GoPro's website, direct mail, and email. J.A. 5000-01. We do not reach whether this testimony standing alone was sufficient to meet GoPro's burden, as we find that distribution at the dealer show was sufficient.
Contour's screenshot of the Tucker Rocky website states that "[Tucker Rocky Distributing] stock[s] and sell[s] over 75,000 items for street bikes, off-road motorcycles and ATVs, as well as all the accessories and apparel needed by the people that ride them." J.A. 5644 (emphasis added).
The Board relied on evidence that Tucker Rocky is a membership organization and wholesale distributor that does not sell to the public. J.A. 24-25.
Reference
- Full Case Name
- GOPRO, INC. v. CONTOUR IP HOLDING LLC
- Cited By
- 10 cases
- Status
- Published