CAFC Rules Patent Applicant’s Own Copyrighted Manuscript Not Publicly Accessible

The recent case of In re Lister is a painful reminder of the potential for “self-inflicted wounds” under the “printed publication” bar of 35 U.S.C. § 102(b) .  Fortunately, the patent applicant in Lister was able to skirt around this “hazard” of his own making.

The patent applicant, Dr. Richard Lister, was a Ph.D. clinical psychologist and an avid sportsman.  Dr. Lister had grown weary of the “horrendously slow pace of a game of golf.”  In response, he developed a method for playing recreational golf where the participant could “tee up their balls on every shot except for those taken from designated hazard areas or the putting green.” On August 5, 1996, he filed a patent application (the Lister Patent Application) for this method of playing golf.

But Dr. Lister also found out that patent prosecution can take place at a “horrendously slow pace” too. For 13 years, Dr. Lister went through “several rounds of rejections and amendments” in trying to patent his method of playing golf. He was finally brought up “short of the green” by the U.S. Patent and Trademark Office due to a “hazard” of his own making: his own manuscript entitled “Advanced Handicap Alternatives for Golf” (Lister Manuscript) which he submitted to the U.S. Copyright Office on July 4, 1994, and for which a certificate of registration was issued on July 18, 1994. And yes, the Lister Manuscript described the same method of playing golf as the Lister Patent Application.

This Lister Manuscript became the focal point of the Lister case as a potential “printed publication” bar under 35 U.S.C. § 102(b).  The Examiner, as well as the Board of Appeals and Interferences (Board), was prepared to “disqualify” Lister Patent Application based on the Lister Manuscript being “publicly accessible.” But the Federal Circuit gave Dr. Lister a “mulligan,” ruling that there was insufficient evidence that the Lister Manuscript was “publicly accessible” more than 1 year prior to the filing of the Lister Patent Application. As a result, Dr. Lister was barely able to avoid the potentially fatal “hazard” of his own manuscript as a “printed publication” bar.

In the Lister case, the Federal Circuit once again tried to make “all square” their various prior rulings on when a document becomes “sufficiently accessible to the public interested in the art” to be a “printed publication” bar. First, there were the “thesis” or “library” cases of In re Bayer, In re Hall, and In re Cronyn. In the Bayer case, the CCPA (predecessor of the Federal Circuit) in 1978 had ruled that an uncatalogued and unshelved thesis wasn’t “publicly accessible.” By contrast, in the 1986 Hall case, the Federal Circuit held that a dissertation shelved in the stacks and indexed in the catalog at a university library was “publicly accessible.”

Finally, in the 1989 Cronyn case, the Federal Circuit was confronted with a student’s thesis housed in two different college libraries. Each library contained a collection of student theses and a corresponding set of index cards that listed the title and author of each thesis. But these index cards were arranged alphabetically by the author’s last name, and thus bore no relationship to what the subject was for each thesis. Accordingly, the Federal Circuit held in Cronyn that the theses were not “publicly accessible” because “they had not been either cataloged or indexed in a meaningful way.”

But as the Federal Circuit pointed out in Lister, “neither cataloging nor indexing is a necessary condition for a reference to be publicly accessible,” citing the 2004 case of In re Klopfenstein where poster boards on display at a scientific were held to be “publicly accessible” and thus a “printed publication” bar. Instead, the Federal Circuit resorted to its “conventional swing” of “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.”

The key facts that the parties agreed upon in Lister were: (1) the Lister Manuscript disclosed the claimed invention; (2) the Copyright Office issued a certificate of registration for the Lister Manuscript on July 18, 1994; and (3) absent limited special circumstances, the Copyright Office doesn’t provide copies of the manuscripts, or permit individuals inspecting the document to make copies of them. But the crucial point which they disagreed upon was “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.”

Dr. Lister’s first argument that the Lister Manuscript wasn’t “publicly accessible” because of the burden of traveling to Washington, D.C., and navigating what he described as the “cumbersome procedures” necessary to gain access to the Lister manuscript resulted in a “bogey.” For this first argument, Dr. Lister analogized to the 1990 case of Northern Telecom, Inc. v. Datapoint Corp. where the Federal Circuit held that several documents relating to a military system for distributed computer processing of logistical data were not a “printed publication” bar because they were not “generally available” to the interested public. But the Federal Circuit distinguished Northern Telecom, noting that in that case there was “restricted access” to those documents. By contrast, in Lister, “any member of the public who submits a proper request is capable of gaining access to the manuscript without any need for special authorization.” Dr. Lister’s “travel difficulty” shot fared no better as the Federal Circuit pointed to the Hall case (where the dissertation was shelved in a university library in Germany) as holding that “a significant amount of travel” was no impediment to a document being “publicly accessible.”

While the Federal Circuit concluded that the Lister Manuscript was available at the Copyright Office for inspection by any interested person, that “does not end our inquiry” as to “whether anyone would have been able to learn of its existence and potential relevance prior to the critical date.” Dr. Lister first asserted that “the catalogs and databases relied upon by the Board were not sufficiently searchable to lead an interested researcher to the manuscript.” This argument again scored a “bogey” for Dr. Lister. Of the three relevant databases, the Copyright Office’s automated catalog, as well as two commercial databases (Westlaw and Dialog), the two commercial databases permitted searching of titles by keyword (unlike the Copyright Office’s automated catalog which would only allow searching for author and the first word of the title). The Federal Circuit also agreed with the Board that that a researcher could have found the Lister Manuscript by searching the two commercial databases for the word “golf” in combination with the word “handicap” in the title. That made the Lister Manuscript “publicly accessible” once the title was listed on either of the two commercial databases.

But on the “final hole,” Dr. Lister resorted to his trusted “utility club” to argue that there was no evidence that either of the two commercial databases listed the title of the Lister Manuscript prior to the critical date (i.e., August 5, 1995). And with the Federal Circuit agreeing, in the hole Dr. Lister’s shot went for a “birdie.”

The Board tried to equal Dr. Lister’s “birdie,” but ended up “triple bogeying” to finally lose the match (i.e., the Board’s ruling was vacated and remanded by the Federal Circuit). The Board’s first “shot” was that Dr. Lister’s IDS provided substantial evidence that the manuscript was listed in the commercial databases prior to the critical date. But the Board’s first shot “bunkered” when the Federal Circuit said that nothing in the IDS “speaks to the date on which the Lister [M]anuscript was incorporated into the Westlaw and Dialog databases.”

The Board then attempted a Phil Mickelson “rescue shot” by arguing that it had “made a prima facie showing that the [Lister Manuscript] was included in the commercial databases shortly after the Copyright Office granted the certificate of registration and the burden has shifted to Dr. Lister to present evidence that it was not in either database before the critical date.” But rather than going towards the hole, this “rescue shot” instead flew “over the green.” As the Federal Circuit observed, all that the evidence showed is “that at some point in time Westlaw and Dialog incorporated the Copyright Office’s automated catalog information about the Lister [M]anuscript into their own databases.” But “[t]here is no indication as to when that occurred or whether it was prior to the critical date.”

The Board’s final effort to sink a desperation chip shot (by urging it was appropriate to presume the information on the Lister Manuscript was added to the Westlaw and Dialog databases prior to the critical date because it was more than a year after the certificate of registration was granted) also failed to find the hole. As the Federal Circuit put it, “absent any evidence pertaining to the general practices of the Copyright Office, Westlaw, and Dialog, or the typical time that elapses between copyright registration, inclusion in the Copyright Office’s automated catalog, and subsequent incorporation into one of the commercial databases, any presumption along those lines would be pure speculation (emphasis added).” And with that, the Board was forced to concede the match to Dr. Lister (1 up), as least for this round.

*© 2009 Eric W. Guttag.


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Join the Discussion

3 comments so far.

  • [Avatar for Jules]
    November 17, 2009 10:49 pm

    Well, I finally got around to reading SRI International v. Internet Security Systems. Quite a good read, with a good dissent. I think you are right about the lack of consensus in the Federal Circuit. One thing I would bet on is that we will probably see more cases like this one in the future. Looking forward to your article. It should help folks like me who must have been on vacation when that case was decided =)

  • [Avatar for EG]
    October 28, 2009 05:16 pm


    Glad you enjoyed my wrie up. I happen to be a “golf fanatic,” so I had a great time sprinkling in some appropriate golf terminology.

    I’ve got a much longer article in progress (which includes the Lister case) on when electronically posted documents may become a “printed publication” bar. The “seminal” case on this subject is SRI International v. Internet Security Systems involving a document that was temporarily posed on an FTP server. There is a majority opinion by Judge Rader, and a partially dissenting opinion by Judge Moore in that case.

    Needless to say there’s absolutely no consensus in the Federal Circuit on how to apply the “printed publication” bar in the Internet age. So far, I’ve come up with 4 issues/challenges in applying “printed publication” bars to electronically posted documents:

    1. Use only “publicly accessible” criteria in judging electronically posted documents as “printed publication” bars. The Federal Circuit has created significant confusion by mixing together the “printed publication” bar criteria from the “publicly accessible” (e.g., “thesis/library”) cases, with the “printed publication” bar criteria from the “dissemination” (e.g., “public conference”) cases. Situations involving documents electronically posted are more analogous to a stationary library, so only “publicly accessible” cases are normally relevant.

    2. Internet search capabilities should be assessed as of the time the “printed publication” bar allegedly occurred, and without reference to those capabilities at the time the case is decided. The SRI International case hints at the inherent danger of being potentially influenced and unduly prejudiced by current knowledge of Internet search capabilities.

    3. It is the Internet search skills of the “target audience” that matters most to what is “publicly accessible,” and not their knowledge of the relevant “art.” The SRI International case also suggests challenges in correctly assessing and determining what the Internet search skills are of the relevant “person of ordinary skill in the art” (i.e., the “target audience”) who might be accessing the document which is electronically posted.

    4. The potential “transitory” nature of electronically posted documents may affect what is “publicly accessible.” Realistically evaluating the “public accessibility” of such “transitory” content could be a significant challenge/issue.

    I hope to have this article completed by the end of this year or by early next year. Stay tuned.

  • [Avatar for Jules]
    October 28, 2009 02:02 pm

    Nice write up on an interesting case. I especially like the quote at the end from the Federal Circuit.

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