On February 8, 2024, the Federal Circuit Court of Appeals held that confidentiality provisions do not protect a document from being prior art if that document is intended for engagement with target audience. Weber, Inc. v. Provisur Techs., Inc., 92 F.4th 1059, 1065 (Fed. Cir. 2024).
The appeal arose from IPR2020-01156 and IPR2020-01157, where the Board determined that Weber failed to establish the unpatentability of the claims of Provisur’s patents, U.S. Patent No. 10,639,812 and U.S. Patent No. 10,625,436 relating to food slicers. Weber, 92 F.4th at 1062. On appeal, the Federal Circuit Court of Appeals reversed the Board’s determination that Weber’s operating manuals were not prior art printed publications. These operating manuals were “created and disseminated to accompany and explain how to use Weber’s commercial food slicer products.” Id. at 1065.
“Printed publication” is classified as prior art under 35 U.S.C. § 102(a)(1), and the term means a reference that was “sufficiently accessible to the public interested in the art.” Weber, 92 F.4th at 1067 (citing In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004)). The standard for public accessibility is “whether interested members of the relevant public could locate the reference by reasonable diligence.” Id. (citing Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1376 (Fed. Cir. 2021)). The Board found these operating manuals were not prior art printed publications because they were distributed to just ten unique customers, and were subject to confidentiality restrictions in Weber’s terms and conditions underlying the sale of each product. Weber, 92 F.4th at 1066.
The Federal Circuit Court of Appeals disagreed with the Board’s determination, and found that Weber’s operating manuals were accessible to interested members of the relevant public by reasonable diligence. Weber, 92 F.4th at 1068. For example, Weber’s copyright notice allows the original owners and their personnel to copy the operating manual for their own internal use, and Weber expressly instructed customers who were re-selling their slicers to transfer their operating manuals to purchasing third parties. Id. at 1068-69. Thus, the Federal Circuit Court of Appeals concluded that “Weber’s assertion of copyright ownership does not negate its own ability to make the reference publicly accessible.” Weber, 92 F.4th at 1069 (citing Correge v. Murphy, 705 F.2d 1326, 1328-30 (Fed. Cir. 1983)).