PTAB Judgment for Patent Owner Reversed, GoPro Catalog is Prior Art Friday, July 27th, the Court of Appeals for the Federal Circuit issued a precedential opinion in GoPro, Inc. v. Contour IP Holdings, vacating a final written decision coming from the Patent Trial and Appeal Board (PTAB) that had upheld patent claims in the face of a validity challenge petitioned by action camera company GoPro. The Federal Circuit panel of Circuit Judges Jimmie Reyna (author of the opinion), Evan Wallach and Todd Hughes found that the PTAB had erred in finding that a 2009 GoPro catalog did not qualify as a prior art printed publication for rendering the challenged claims invalid for obviousness.

There are two patents at issue in this case 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 patents claim priority to a provisional application filed on September 13, 2010. The patents are:

  • U.S. Patent No. 8890954, titled Portable Digital Video Camera Configured for Remote Image Acquisition Control and Viewing. Issued to Contour in November 2014, it covers an integrated, hands-free, portable, wearable, viewfinderless point of view (POV) digital video camera equipped with a wireless Internet protocol and global navigation and location positioning system technology.
  • U.S. Patent No. 8896694, same title as the ‘954 patent. Also issued to Contour in November 2014, it claims a POV digital video camera system with GPS and Bluetooth capabilities for capturing action video, tracking data such as speed and elevation as well as posting video online.

GoPro petitioned for inter partes review of the ’954 and ’694 patents. 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 as prior art in each petition.

The catalog discloses a digital camera linked to a wireless viewfinder/controller that allows for a user preview before recording. GoPro submitted a declaration from its employee relating to distribution of the catalog. The employee testified that Tucker Rocky holds an annual dealer trade show, which he attended for GoPro from July 23 through July 27, 2009. There were approximately 150 vendors and more than 1,000 attendees at the trade show, including actual and potential dealers, retailers and customers of portable POV cameras. The catalog was displayed at the GoPro booth and was distributed to attendees. GoPro continued to make the catalog available to its actual and potential customers, dealers, and retailers through its website, direct mail and other means of distribution.

Contour argued that GoPro had not demonstrated that the GoPro catalog was a prior art printed publication, because Turner Rocky is a wholesale distributor that does not sell to the public, and the trade show was open to dealers but not the public.

In its final written decision, the Board found that the catalog did not qualify as a prior art printed publication under 35 U.S.C. § 102(b). It concluded that GoPro had not met its burden to show that the catalog was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, and exercising reasonable diligence, could have located it. GoPro appealed to the Federal Circuit.

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 Federal Circuit has 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. Thus, “[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.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).

The principal issue on appeal was whether the catalog was sufficiently accessible as contemplated under § 102(b). The Board found that a person ordinarily skilled in the art would not be interested in the trade show because it was not an academic conference or camera industry conference. Instead, it was a trade show for action sports vehicles such as motorcycles, motorbikes, ATVs, snowmobiles and watercraft. The Court rejected this reasoning, finding that it focused on only one of several factors relevant to determining public accessibility in the context of materials distributed at conferences or meetings. Courts must also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.

“The case law regarding accessibility is not as narrow as the Board interprets it,” the Federal Circuit explained, noting that the PTAB only focused on one of several factors for determining public accessibility.

Although the trade show focused on action sports vehicles, this did not preclude persons ordinarily skilled in the art from attending to see what POV digital cameras were being advertised and displayed. The ’954 and ’694 patents even described that a primary purpose of POV cameras is for use on vehicles in extreme action environments, like the ones advertised at the trade show. Furthermore, the attendees attracted to the trade show were likely more sophisticated and involved in the extreme action vehicle space than an average consumer. Consequently, it was likely that persons ordinarily skilled and interested in POV action cameras attended the trade show, or at least knew about it, and expected to find action sports cameras there.

The Court concluded that GoPro met its burden to show that its catalog is a printed publication under § 102(b). Because the Board did not accept the catalog as a printed publication, it did not consider the merits of GoPro’s obviousness claims. Therefore, the Court vacated 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. On remand, the Court ordered the Board to consider the catalog as prior art and evaluate the merits of GoPro’s unpatentability claims.

Take Away

The standard for public accessibility of printed publications is one of reasonable diligence to locate the information by interested members of the relevant public. Courts must consider several factors when determining public accessibility in the context of materials distributed at conferences or meetings, including the nature of the conference or meeting; whether a person ordinarily skilled in the art would be interested in the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.

Image Source: Deposit Photos.


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Join the Discussion

14 comments so far.

  • [Avatar for LazyCubicleMonkey]
    August 10, 2018 09:56 pm

    I’m a fairly new reader of this site – could you link me to the articles you refer to? FYI – my view is based on this: (even though it’s copyright not patent-related, they’re both intellectual property law-related).

    Golan v. Holder puts material that was previously in the public domain back into the private domain – and it’s likely a one-off – cases like that likely won’t arise again. How that encourages/promotes the creation of additional ‘useful arts & sciences’, I cannot see. But I do see how it enriches copyright holders. I do understand that patents & copyrights are different, but they both derive their power from the same clause of the Constitution.

    Regarding your answer on trade secrets – I do see how it can be a public good – it forces the eventual opening of the trade secret to the public. What doesn’t sit well with me is the idea of an inventor (patentee?) inventing something that’s already been obviously invented and having the sole power to profit from it even though someone came up with the same idea first.

  • [Avatar for Anon]
    August 10, 2018 09:56 am

    As to “I actually prefer to think of it as a temporary government-enforced monopoly.” – that is an even worse and off the mark view. Mr. Quinn has published articles here as to why the use of the term “monopoly” as you attempt is simply clear error. You would do well to inform yourself and your opinion on such legal terms.

    I am interested in how you think the Golan v. Holder case switches “the view” of promotion away from a US Constitutional base to a Berne Convention base. I am very familiar with both, so your statement – without more – does not pass muster. Perhaps you have some backing to the viewpoint worth exploring, and if so, I would love to hear it.

    Finally, your question as to how this jibes with Trade Secrets is an interesting one; albeit, one that could consume an entire conversation all on its own. The short answer though as to ability to sue is a most definite “Yes.**” I would fully expect a battle though along any number of legal lines (with Google/Coke attempting to BOTH maintain its trade secret(s) as well as attack the patent on any number of grounds.

    ** I do hope that you understand exactly why the “Yes.” is a good thing. While trade secrets certainly have their place, they are in fact inimical to – and represent an opposing view of – the purpose of a patent system.

  • [Avatar for LazyCubicleMonkey]
    August 9, 2018 06:28 pm

    Fair points – I am likely conflating the common view of “available to the public” vs the legal view.

    Regarding ownership of ideas – I actually prefer to think of it as a temporary government-enforced monopoly.

    I do see your point on the other meaning of “promote” – not that it matters much anyways – since the Berne Convention seems to be the prevailing view on intellectual property instead of the Constitution nowadays anyways – case in point:

    How does this view jive with Trade Secrets? If someone decides to patent a software implementation of Google’s Search algorithm/Coke’s secret recipe (which is a trade secret), would they be able to sue Google/Coke for infringement? The inventor would be the one promoting it for eventual public use as opposed to Google/Coke…

  • [Avatar for Anon]
    August 9, 2018 10:34 am


    Venturing into the legal domain, you will have to be careful with the vernacular that you choose, and the meaning of same – especially as regards legal versus “common” contexts.

    For example, when you state: “a sense where it’s not necessarily available to the public,” you appear to be on the edge of conflating a “common” view with a legal view – wherein you may be misunderstanding the driving (as in, controlling) legal context of what “available to the public” means.

    In this case, that phrase “available to the public” does NOT exactly match the “common view” that you may be thinking of.

    Further, you choice of language in your point 3. is in error (patents are not “ownerships of ideas”).

    Aside from the “nit” of point 3’s “idea ownership,” – if I translate that from the anti-patent basis to a more correct and neutral understanding – you appear to miss entirely an aspect that has been true to the US patent system from its beginnings:

    Any “first inventor” that “hides” his invention and does not share it (to the LEGAL level of publishing), has always run the risk of being excluded from a later (independent) inventor that HAS decided to share (through the use of the patent system).

    There is zero wrong in this, and this is “black letter” accepted as part of truly encouraging innovation. This is a desirable outcome under ALL patent regimes.

    Part of your problem, if I may be so bold, is that you view the term “promote” not in its fullest sense. I take it that you understand that term only in its one sense of “advance the state of the art.”

    But that is not – and never has been – the only sense of the word in relation to the patent regimes. In this instance, the bigger driver of the sense of the word can be understood when you link the word “promote” to the advertising sense of “promotion.” The critical difference – and the difference in the hypo of your three steps – is that your person at 1. did not “promote” properly (per the legal context) and the person at 2. did “promote” properly.

    One aspect of a strong patent system is the ability to use the patent as both a carrot and a stick. A carrot to the person at 2. that uses the system and a stick AGAINST the person at 1. that innovates, but does not “promote” properly.

  • [Avatar for LazyCubicleMonkey]
    August 9, 2018 12:43 am

    So let me get this straight:

    1. Some party publishes documents of a patentable idea. I use “publishes” in a sense where it’s not necessarily available to the public but still provable that it was published at some point in time.
    2. Someone comes along and patents the idea mentioned in the previous step at a later date (and the patent examiner obviously missed the publication mentioned in step 1).
    3. The patent in step 2 “owns” the idea mentioned in step 1. Party that originally came up with idea in step 1 is can now be considered infringing on the idea that they came up with first.

    Is this a system that truly encourages innovation as stated in the Constitution: “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” ?

    Let’s sidestep the legal arguments for a moment… How is this a desirable outcome under any patent regime?

  • [Avatar for Eric Berend]
    Eric Berend
    August 7, 2018 07:48 am

    See: how a rare ‘approval’ from the PTAB, still does not ensure stability of patent title! All, perfectly well designed to completely discourage actual, real world inventors from any involvement with the U.S. patent-SCAM system.

    What a farce! Do the PTAB so-called “judges” (see: Roberts, J., Chief Justice of the SCOTUS) coordinate with the anti-patent ‘real-world’ Judges of the CAFC; e.g.: “you guys knock out that one, and just for fun, we’ll knock out this one…give’em a wrinkle for fun, this time.”

    No? Well, with Judges normally recusing themselves in other matters at the mere chance of an appearance of impropriety, the jocular contempt with which patentees are now routinely treated, stands out like the proverbial sore thumb.

  • [Avatar for Anon]
    August 6, 2018 03:00 pm

    I have to agree with Benny here – I found Mr. Wu’s comment to be written too sharply and not in accord with well established patent law principles.

    Yes, I do “get” the concern from Mr. Wu that the ability to fabricate (and prevaricate) – and to do so SO very easily in a digital world – IS a very real concern.

    But that concern is simply a reality of what “publication” means (and has always meant) in a patent sense. Being one that points out where the courts (and Court) has strayed in being anti-patent, this is NOT one of those places, and the criticism from Mr. Wu is not well-founded (even if well-intentioned).

    Perhaps where Mr. Wu should aim is more along the lines of those who would offer such “evidence” to defeat a properly granted patent would need to do so in a manner that preserves the intent of what such evidence has always been meant to have. As it is, this too is still in place, as the level of presumption to be overcome (at least outside of the AIA post grant scheme) is STILL “clear and convincing.”

  • [Avatar for Jianqing Wu]
    Jianqing Wu
    August 6, 2018 11:56 am

    To clarify my point, you only need to pay attention to “2009 GoPro sales catalog.” I also ask you to think millions of web pages for which times and dates can be easily changed. “Publication” originally meant something is circulated and does not need declaration to establish credibility.

  • [Avatar for Benny]
    August 6, 2018 09:47 am

    Are you suggesting that bona fide prior art should be disregarded simply because it is possible to fabricate false prior art, even though there is no evidence of fabrication in this particular case? Doesn’t make sense to me.
    Bemused – you don’t get a patent if someone else disclosed the invention before you came up with the idea (or copied the idea from a catalog you picked up at a trade show). Published and publicly available prior art disqualifies you from obtaining a monopoly on that art. Do you really need it spelled out to you ?

  • [Avatar for Night Writer]
    Night Writer
    August 6, 2018 08:10 am

    @3 Benny

    I read J Wu as saying that it would be too easy to fabricate “evidence” of showing something at some unrelated conference.

  • [Avatar for Benny]
    August 6, 2018 06:56 am

    J Wu,
    “The judges have kept doing things to make inventing and patents impossible. The patent owner should petition the U.S. Supreme Court”

    You appear to be suggesting that the USPTO should grant, and the PTAB uphold, patent protection for applicants in the face of evidence that they are not first to invent, and information disclosing their application was publicly available to them prior to the application date.
    That is not how patent systems are supposed to work.
    Taking your suggestion that the patent owner should petition, together with the possibility you raised of creating fake backdated evidence, it would appear that you are accusing GoPro of committing fraud – a serious accusation which demands serious evidence.

  • [Avatar for Bemused]
    August 5, 2018 09:32 pm

    Shocking that the death squad PTAB actually found in favor of the patent holder. But have no fear! The Three Stooges (Reyna, Wallach and Hughes) took care of that pesky patent.

  • [Avatar for Night Writer]
    Night Writer
    August 5, 2018 06:10 pm

    Of course Reyna, Wallach, and Hughes are judges that were appointed by Obama during the heavy Google influence era. All three were selected for their virulent dislike of patents coupled with their complete ignorance of science and technology.

  • [Avatar for Jianqing Wu]
    Jianqing Wu
    August 5, 2018 11:44 am

    Maybe the court is technically right to find that “a 2009 GoPro sales catalog” is a printed publication.

    However, this is really and really bad law. Without requiring additional proof (e.g., the publication can be actually found and retrieved), this rule will encourage any one to manufacture prior art. Thus, printed publication soon will be found in any corner of the world. Printing any thing is very easy now. Millions to billions people (especially in cultures where making false declaration is routine and common) can make such a declaration especially if they know a printed publication has been created for litigation purpose and cannot be refuted by anyone. I predict that some day many patents will be invalidated by using this rule. Another related problem is the massive “publications” that come and go without achieved versions….

    U.S. patents will be worse than running water, but more close to “moving air or gas”. A nation will not thrive by relying upon such a patent system that is only able to produce moving air: a patent can suddenly vaporize to become nothing.

    The judges have kept doing things to make inventing and patents impossible. The patent owner should petition the U.S. Supreme Court (hopping that justices have a good sense do justice).

    Maybe, a real solution is that all future judges and justices are required to visit hundreds of corners in the world so that they will understand more about human behaviors.