After Weber v. Provisur, Confidentiality Provisions May Not Be Sufficient to Protect Your Documents from Being Prior Art

On February 8, 2024, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Weber, Inc. v. Provisur Technologies, Inc., reversing the finding of the Patent Trial and Appeal Board (PTAB) that certain operating manuals with limited dissemination and confidentiality restrictions did not qualify as prior art. The Federal Circuit’s decision concluded that the Board misapplied the analysis for meeting the public accessibility standard for a printed publication to qualify as prior art.

In the dispute in question, the Federal Circuit ruled that Weber’s operating manuals qualified as printed publications under 35 U.S.C. § 102(b) even if Weber only sent them to a small number of customers (ten unique entities) and imposed confidentiality restrictions in the form of a copyright notice and intellectual property rights clause within its terms and conditions of sale.

Ultimately, the Federal Circuit clarified that “[t]he touchstone of whether a reference constitutes a printed publication is public accessibility.” Writing for a three-judge panel, Judge Reyna concluded that the Board misapplied the Federal Circuit precedent on public accessibility in Cordis Corp. v. Boston Scientific Corp., highlighting that “[t]he standard for public accessibility is whether interested members of the relevant public could locate the reference by reasonable diligence.”

In Cordis, the Federal Circuit ruled that academic monographs on intravascular stents did not qualify as prior art printed publications. This decision was based on the limited circulation of the academic monographs and the prevailing academic standards, which anticipated that the papers would stay confidential after they were shared with a select group of academic peers and potential business allies.

Accordingly, the Federal Circuit held that the disclosure in Cordis is distinct from the current case. In Cordis, the decision was influenced by the norms of academic confidentiality. On the other hand, Weber’s manuals were aimed at being shared with the public, especially those interested in the upkeep and repair of Weber’s commercial food slicers. The Federal Circuit determined that when a publication is intended for engagement with its target audience, as was the case here, it suggests that the publication is meant to be publicly accessible.

Furthermore, Judge Reyna relied on Weber’s general practice of distributing the operating manuals with each slicer purchase, Weber’s permission for its employees to disseminate the operating manuals upon customer requests, and Weber’s explicit instruction to customers to transfer the operating manuals to new owners upon reselling their slicers.

Key Takeaways

Moving forward, one should note that “[n]o minimum number of occasions of access is dispositive of the public accessibility inquiry in all cases,” nor should one rely on an intellectual property rights clause within the terms and conditions covering a sale. The Weber decision underscores that if a publication is aimed at reaching an intended audience, this intention carries with it the risk of implying sufficient public accessibility. Accordingly, a disclosure limited in dissemination or by confidentiality restrictions may still meet the public accessibility standard for prior art, based on the circumstances of the disclosure and the expectations around subsequent distribution.

In navigating these risks, companies should consider that the expectation of confidentiality and any restrictions, or the lack thereof in disclosures, remains a critical factor in this case-by-case inquiry into whether a disputed reference was disclosed to the public. Here, while executing a confidentiality agreement that provides for the return or the destruction of the documents might offer some rebuttal to the presumption of public disclosure, the lack of such an agreement is not necessarily a death knell for the inventor’s interests and rights.

For example, in Cordis, the Federal Circuit found that the code of practice and norms in academic circles adequately supported the conclusion of confidentiality expectations. Therefore, the court did not consider a pertinent disclosure as prior art printed publications, even when generated under a potential development agreement that disclaimed the confidentiality requirement. In contrast, in Medtronic v. Mark A. Barry, the Federal Circuit remanded the PTAB’s finding that video and slides distributed at two separate engagement meetings with medical doctors and experts did not constitute prior art. This decision was based on the absence of evidence on the record addressing whether the professional and behavioral norms of these engagements implied an expectation of confidentiality. Upon remanding the case to the PTAB, the Federal Circuit emphasized the need to investigate whether there was an expectation of confidentiality or restrictions from further distribution by those in attendance.

Accordingly, inventors and practitioners alike must tailor the expectation of confidentiality and restrictions concerning any disclosure, at a minimum, in view of the policies or practices shaping their industry. Likely as a weapon of last rather than a first resort, the Federal Circuit identifies several other factors relevant to this case-by-case inquiry that inventors and practitioners should consider. These factors include the length of time the material was displayed, the ability of the target audience to retain the presented information, and “the simplicity or ease with which the material displayed could have been copied.”

Navigating Weber’s precedential decision in the realm of competitive business landscapes necessitates that companies invest in tailoring their confidentiality measures to the intended level of secrecy. This is crucial to effectively mitigate the risks associated with the public accessibility of sensitive information. For entities like Weber, it is important to consider the context in which documents are used and to flag situations where a higher degree of secrecy may be required. Imposing the right measures concerning the dissemination, access, and reproduction of the concerned documents is essential to overcome the trap of inadvertent disclosure.

While public accessibility remains the touchstone for the inquiry into whether a reference constitutes a “printed publication” under 35 U.S.C. § 102, these three precedential decisions by three-member panels underscore that the expectation of confidentiality is a crucial aspect of this determination.

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