Printed Publication: Documents Made Available only to Customers

by Dennis Crouch

The 1836 Patent Act added the caveat that no patent should issue on an invention  previously “described in any printed publication.”  That language has carried through the various major patent law overhauls and continues as a prominent aspect of 35 U.S.C. 102(a)(1).

A person shall be entitled to a patent unless (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention …

The Supreme Court has interpreted the scope of the phrase in dozens of patent cases over the past 180 years, but questions remain. A new petition asks the court to examine the phrase again and help define when a document crosses the publication threshold. In particular, the petition asks whether documents made available only to customers, and not generally to the public, count as being published.  Centripetal Networks, Inc. v. Cisco Systems, Inc., No. 21-193 (Supreme Court 2021).

Question presented:

Can a document qualify as a printed publication if it is stored on a password-protected website, not accessible to the public, and available only to customers who pay over $25,000 dollars to purchase related software?

[Read the Petition here]. In its decision, the Federal Circuit found the documents at issue to be a printed publication.  The court relied upon additional facts not found in the question presented–noting that the document in question was distributed to hundreds of customers over a span of years and without any confidentiality restrictions; and that product advertisements were designed to attract persons of skill in the art.  On balance, the Federal Circuit found the document “sufficiently disseminated” to count as a publication.

Here, the Board found, based on testimony from a Sourcefire company employee, that each of the 586 customers who purchased a range of Sourcefire products over a relevant two-year period received a CD-ROM containing the user guide, which explicitly stated that users were permitted to “use, print out, save on a retrieval system, and otherwise copy and distribute” the reference for noncommercial use. Further, Centripetal presented no evidence to the Board showing that—despite the CD-ROM distribution— an interested person using reasonable diligence would not have been able to access Sourcefire either by purchasing the product or by receiving a copy of the user guide from another customer.  Substantial evidence, including advertisements, reviews, and testimony from a Sourcefire company employee, supports the Board’s finding that those interested and of skill in the art actually purchased Sourcefire. In sum, the large number of Sourcefire product customers, the number of years the product was available, the advertisements targeting those interested and of skill in the art, and the lack of confidentiality restrictions on copying or distributing Sourcefire support a finding of public accessibility.

Centripetal Networks, Inc. v. Cisco Sys., Inc., 847 Fed. Appx. 869, 877 (Fed. Cir. 2021)(nonprecedential opinion).

The case offers a theoretical question — what price is too high before a document no longer counts as a printed publication. It is not really publicly available if the sales price is $1 billion. On the other hand, in this case the price was $25,000 (an amount that some folks paid).

31 thoughts on “Printed Publication: Documents Made Available only to Customers

  1. 9

    Yeah, espionage shouldn’t apply … except for “constructive foreseeability”. (?)

    Due diligence standard might be workable. I’m thinking of scenarios like the recent T-Mobile hack wherein the hacker ridiculed T-Mobile security as constituting something of a howler.

    IF (security = Howler AND system = Hacked) THEN Due_Diligence = 0

  2. 8

    “The petition asks whether documents made available only to customers, and not generally to the public, count as being published.”

    Available “generally to the public” is way too broad in this question. The prevailing precedent seems to indicate that a work need only be accessible to persons having ordinary skill in the art (PHOSITA), which is the interested portion of the public.

    But I would still ask in this case whether “customers” to whom the revelant document was made available are in fact PHOSITA. The customers are typically end users, not normally designers or competing manufacturers of that type of product. So was the document accessible to PHOSITA? Do engineers and manufacturers routinely purchase competing products (at a cost of $25000 in this case) just to get a hold of a user manual that may or may not be informative? If some do, then that may be enough for it to qualify as a publication sufficiently available to the relevant public. If not, then I’d question the relevance of 586 “customers” receiving the document.

    “Centripetal presented no evidence to the Board showing that—despite the CD-ROM distribution— an interested person using reasonable diligence would not have been able to access Sourcefire either by purchasing the product or by receiving a copy of the user guide from another customer. ” That last bit about pestering a competitor’s customers for the document (assuming they are known or can be identified and located so as to be contacted, and assuming they would be willing to cooperate with such an out-of-the-blue request from a third party) is bothersome to me. Perhaps I’m wrong, but I don’t see that as a valid real-world form of accessibility.

    Interested readers may wish to look over the USPTO’s summary found in MPEP 2128 – 2128.02, and then look especially at the various referenced library cases (In re Bayer, In re Wyer, In re Hall, In re Cronyn, In re Klopfenstein).

  3. 7

    Should physical security be the determinant?

    What does it matter how much a document costs to obtain if access can be hacked far more easily than its Keystone Kops Kurators realize? Suppose an intruder gets a document and the breach is later discovered — extent of dissemination unknown — is the document not publicly available because it was stolen?

    1. 7.1

      Some of the “grace period” language in patent laws outside the U.S. seems to take that view, or at least strike a balance along those lines, by allowing a limited period of time to file after a disclosure that was made against the wishes of the inventor.

      I’d tend to prefer a policy that didn’t depend on the success of physical security. At a minimum, there are some decent equitable arguments to be made that corporate espionage shouldn’t wholly deprive an inventor of their patent rights.

  4. 6

    I’ve notice almost no mention of hindsight reasoning by the Obama appointed and SV selected judges. I’ve notice the more ignorant a judge is of science the less likely they are to care about or understand hindsight reasoning. They seem to completely discount it and don’t even try to understand how it works in their own minds.

    Note too that hindsight reasoning is something where you can google scholar it and get 100’s of papers on real experiments showing that once a person knows something that it is impossible for them to reason without using that knowlege.

    And yet the stacked CAFC doesn’t care. A good empirical indication that these are anti-patent judicial activists judges that don’t care about science, innovation, or applying the law.

    1. 6.1

      When one gets into a ‘Ends Justifies the Means’ mode, critical thinking becomes the enemy.

      (by the way, this — the lack of critical thinking — is one of the hugest failures of the American Academic system)

  5. 5

    This is important, because a surprising amount of detailed prior art is found in service manuals and instruction manuals for products, which is not found in patents, and may not be clear from the products themselves.* Such documents will not normally have been found by the PTO application examiner.
    For those being sued for patent infringement this is a natural thing to search for, and $25,000 is peanuts for patent suit defendant searches. Also, smart companies keep dated copies of such materials of theirs for defenses against later filed patents of others.
    *And the products themselves cannot be used in an IPR.

    1. 5.1

      “detailed prior art is found in service manuals and instruction manuals for products, which is not found in patents”

      Very true. I’ve dealt with manuals several times as cited prior art. One time, the Examiner (a Primary no less) cited a patent as allegedly anticipating the claim, but was also citing a user/service/instruction manual from the patent’s assignee (for one of the assignee’s devices which was allegedly covered by the patent though no evidence was provided in that regard other than “the pictures in the manual look something like what is seen in the figures”) as “further explaining” the patent. For various reasons (including that there was no evidence that manual had anything to do with the cited patent), the Examiner backed off from that anticipation rejection. The Examiner did come back with a different anticipation rejection that the manual alone anticipated several of the claims. After filing a response to that (with a very minor amendment), the Examiner withdrew that anticipation rejection, and then came back with an obviousness rejection based on the combination of the patent and the manual. Rinse and repeat. Ultimately, it was near the end of the fiscal year, and I got a call from the Examiner that he would allow the application if he could make an Examiner’s amendment to the independent claims. The proposed amendment was to the pre-amble so, after running it by the client, we agreed to the Examiner’s Amendment, and a patent issued in due course, with a continuation application filed prior to issuance of the patent.
      Imagine my surprise when the first Office Action in the continuation application turned out to be a Notice of Allowance. The continuation application’s independent claims were identical to the claims originally filed in the parent application.

  6. 4

    “a CD-ROM containing the user guide, which explicitly stated that users were permitted to “use, print out, save on a retrieval system, and otherwise copy and distribute” the reference for noncommercial use.”

    A CD-ROM. As Scotty would say, “How quaint.”

  7. 3

    Egads. Unlike with their 101 / eligibility jurisIMprudence, the CAFC actually got this one right.

    Petition denied.

  8. 2

    For me, the driver here is not the price that must be paid, but the fact that “and without any confidentiality restrictions;

    Even if the price were One Hundred Billion dollars (baby – link to youtube.com ), once that were paid, the information could theoretically be reposted free of charge to the world.

    Without the express intent to NOT have be public, the sale should exhaust the claim of non-publication.

  9. 1

    This asks the question with respect to the pre-AIA statute. Would the answer apply equally to AIA patents?

    In addition, I believe that availability should be a weighted factor in the 103 analysis. If it was not available to a typical person of ordinary skill then it couldn’t be obvious to combine it with other prior art.

    1. 1.1

      Josh,

      The 103 question is NOT to a “typical” person, ad the Person of Ordinary Skill In The Art is expressly a non-human juristic person meant to reflect the state of the art. There is no such thing as “typical” as you attempt to spin that.

      1. 1.1.1

        I just don’t believe it is fair or consistent with statute to hold something obvious to a person of ordinary skill that a real person could not have know about. (I don’t think that is the issue in this petition, so this might be off topic).

        1. 1.1.1.1

          Your belief is mistaken.

          The view of “real person” is expressly different than the juristic person.

          This is black letter law – I would suggest that you hew your beliefs to the law, as the reason behind this has to do with State of the Art as opposed to any single REAL person.

          1. 1.1.1.1.1

            What do you mean be “black letter law”? I seem to recall dicta from Judge Rich on this topic, but I am unaware that it is so-called “black letter law”.

        2. 1.1.1.2

          It probably is not fair, but it is definitely consistent with the statute. Think of the old §102(e)/§103 rejections.

    2. 1.2

      Josh, with your “availability” you are on to something. But “weighted” is for me not quite right. If a disclosure “D1” has already been made available to members of the public, even just one member who was free in law and equity to pass the disclosure on to other members of the public, prior to the date of the claim under enquiry, then D1 is in the set of disclosures from which obviousness attacks can legitimately be cobbled together. Conversely, it ought not to be allowed, to put together an obviousness attack which involves D1, when D1 was not yet made available to members of the public at the date of the claim.

      This is why I think it is so irrational, to permit obviousness attacks based on patent applications at the USPTO not yet laid open or published at the date of the claim under enquiry.

      1. 1.2.1

        I still don’t understand how it can be fair to say a claimed invention is an obvious combination of A and B, when 99.99% of individuals working in the field would have no idea about the subject matter disclosed by B. 9,999 individuals are trying to solve a problem and the state of the art is A. They have nothing else to work with. One person knows about A and B, but hasn’t considered the utility of doing so, or published or patented that combination. The first person to discover B and combine it with A is clearly an inventor who discovered something novel and useful and non-obvious.

        I understand the case law cuts against this, but that is what I find to be inequitable.

        1. 1.2.1.1

          It really is not difficult: legal (juristic) person in regards to State of the Art.

          Stop trying to make it personal (as in, real person).

          When you are traveling through the legal terrain, you really have to be mindful of being colloquial.

        2. 1.2.1.2

          You are also conflating novelty and obviousness.

          IF some things had been combined (as is your want), then you no longer even have the concept of obviousness in the picture.

        3. 1.2.1.3

          Josh, the difficulty is the legislator’s problem, what attributes to ascribe to the notional entity that will decide whether any given subject matter, any new contribution to the art, was or was not “obvious” at the filing date of the application at the USPTO. Back in 1973, there was a humungeous debate in Europe between all the patent law experts of all the involved sovereign legal jurisdictions, what should be the definition of the “state of the art” to be allocated to the Skilled Person and included in the European Patent Convention then being drafted. And what they came up with was “Everything already made available to (at least one) member of “the public” by written or oral disclosure, by use or in any other way.” In that definition, what is key is “public”. Communications between persons who are not free to disseminate the knowledge further are not members of “the public”.

          Once you start down the path of saying that some members of “the public” don’t “count” you doom the obviousness determination to another level of chaos (Some might say it is too chaotic already, as it stands). In these days of searching the net, the idea that only residents within the jurisdiction count as “the public” is no longer tenable.

          Industry needs certainty. From those it asks for a Freedom to Use opinion, it wants a confident answer, not just sitting on the fence. The opinion writer needs unshakeable foundations on which to base the opinion.

          You are right, of course, that the sheer ferocity of the definition of the state of the art leads to bruising of inventors who feel hard done by. The most recent case in England, for example, was of a farmer inventor who tested his seed drill design before filing a patent application on it. Unfortunately for him, his tests were done at a location where the public was free to observe.

          I should add that obviousness law is rich in case law that finds that an obviousness attack founded on D1 + D2 is not made out because the skilled person would not have come to the idea of combining the teachings of D1 and D2. There’s one way that the law compensates for the ferocity of its wide definition of the state of the art. In England, for example, a D1 + D2 attack hardly ever succeeds. More, because it is so hopeless, it is hardly ever run. What can succeed is an attack built around “cgk + D1” in which cgk means “common general knowledge”. For me, that’s the equitable way to do obviousness. But compiling the evidence to prove what was cgk is a serious (read: expensive) legal undertaking. For the patent owner, or patent applicant, that’s a serious advantage.

          1. 1.2.1.3.1

            The myopia continues… (perhaps it is difficult to change one’s habits after decade over decade of the same mindset…

            MaxDrie,

            I have to wonder if you really think that posts that decry your banality should be ignored.

            Across several recent threads, you have clamored for a “re-invigoration” of importation patents.

            Yet here, you stone-facedly assert, “In these days of searching the net, the idea that only residents within the jurisdiction count as “the public” is no longer tenable.

            Do you see the self-induced collision?

            link to patentlyo.com

            As to, “The most recent case in England, for example, was of a farmer inventor who tested his seed drill design before filing a patent application on it. Unfortunately for him, his tests were done at a location where the public was free to observe.

            This is an interesting treatment of “mere testing,” as for in our Sovereign, for example, such mere testing is not — on its own — enough, even within the public view, as may be seen in the contrasting of two old cases [i.e, corset case of Egbert v. Lippmann, 104 U.S. 333 (1881), contrast with the sidewalk case of City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878)].**

            As to, “D1 + D2 is not made out because the skilled person would not have come to the idea of combining the teachings of D1 and D2.

            This reflects my past posts instructive as to the differences between Art itself and the legal notions of anticipation and obviousness. To wit: obviousness is not anticipation broken up into parsed items (and much to the chagrin of a LOT of our judiciary — and even regular contributors to the comments here like Malcolm) is NOT merely ‘like jigsaw puzzle pieces”

            As to, “What can succeed is an attack built around “cgk + D1” in which cgk means “common general knowledge”. — especially in direct comparison of your disparaging of “D1 + D2” — is that one cannot merely assert “cgk,” but must establish that — and THAT is typically (albeit not necessarily) through items such as D2. Hence, your next comment of, “But compiling the evidence to prove what was cgk is a serious (read: expensive) legal undertaking.” yet again provides self-collision.

            But you being you will pay yourself on the back, sit in the corner, and think “my what a fine boy am I.”

            **this “testing in public” to develop MAY be the answer to the Pharma folk whine that they “need” to file early, before they actually posses the utility necessary to be known to be within hand.

            1. 1.2.1.3.1.1

              anon, you see a contradiction between world-wide novelty and a revival of the notion of the “communication invention” from an AI to a human being. There is no contradiction though.

              Think of that communication to a human from an AI as being from an alien on Planet Mars. The reception of that communication by a human being, the conception of its information content in the mind of a human being, for the first time ever, marks the arrival of that information, for the first time, in the wide (not even Earth-bound, these days) world of human knowledge from which the state of the art is computed, being the state of “the art” which is relevant for patentable novelty.
              Conversely, information in the mind of an alien on Planet Mars (or in the process of being generated in the information processor of an AI) is not part of the state of the art.

              If you can formulate and explain to us why that theory of a communication invention revival is useless, please do. I’m agog with curiosity.

              1. 1.2.1.3.1.1.1

                Your inability to see the contradiction does not remove the contradiction.

                Try to think of the difference between real human person and the legal fiction of the juristic Person Having Ordinary Skill In The Art.

                1. And what if I do “think of the difference”, anon? What difference does that make?

                  The attributes of a PHOSITA are necessarily (in order to render objective the determination of obviousness) from those of any real person (for whom what is “obvious” is subjective). It’s the John van Neuman (or Justice Breyer) joke, all over again.

                  But that’s a different matter from the definition of the state of the art. In any definition I can think of, information still only on Planet Mars, or in the digital interior of an AI, has not yet become part of the “state of the art” made available to that legal fiction, the PHOSITA, from which that notional entity will objectively determine what was obvious.

                2. The difference you ask?

                  The difference in understanding law versus some type of pabulum of colloquial-ness masquerading as ‘understanding’ law.

                  Your “on Mars” simple does not work – and it should be abundantly clear why not. The plain fact of the matter is that ANY ‘first reader’ fails to satisfy the legal requirement of BEING an inventor – the subject thereof does in fact exist in the State of the Art, and your attempt to somehow (and merely) want this old vehicle to be resurrected is in direct conflict with your own view as to someone reading something that DOES exist in another country.

                  But go ahead and pat yourself on the back again for having such a mind willing to learn.

                  Or something.

        4. 1.2.1.4

          You fail to understand that the Pharaohs had scribes that had access to all printed documents and that J. Breyer could have invented anything invented in an afternoon if only he had felt like it. Further, you don’t understand that you only need a slice of pizza to motivate you for you next invention. You don’t even need to learn computer science you can just tell a clerk what you would like the computer to do and they will do it.

          Plus you don’t get that these computers are trying to steal our souls and that we all have spirits and our thinking is done in the spirit world. These are claims to the spirit world. –J. Stevens.

          Plus you don’t get that there is no such thing as hindsight reasoning as you will notice that this has been mentioned almost never by a the Obama appointed and SV selected judges.

        5. 1.2.1.5

          Josh, I am wondering whether the various replies that you have received to your 1.2.1 posting have done anything to shift your opinion on how to adjudicate obviousness in an equitable way. You see, it is a matter of some interest to me, whether patent people can ever explain patent law to non-patent attorneys in a way that leads to acceptance of the law by non-patent professionals.

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