PTAB Gives Guidance Regarding What Constitutes A Printed Publication

November 21, 2014

In an IPR petition filed by petitioner C&D Zodiac, Inc., the petitioner sought review of patent owner, B/E Aerospace, Inc.'s U.S. Patent No. 8,590,838, directed to space-saving aircraft enclosures, including lavatories, closets, and galleys. The petition challenged the validity of claims under Section 102 and 103 based on, among other things, a publication entitled McDonnell Douglas DC-10 Customer Configuration Summary (Oct. 1978) referred to as an "Orange Book," presumably because of its orange cover.

The Board granted the petition based on multiple grounds, including the obviousness of the claims in view of a prior art patent to Betts and the Orange Book. Critical to the Board's holding was its determination that the Orange Book satisfied the printed publication requirement for prior art purposes.

The Board began is analysis by reciting the accepted test, which is based on the public accessibility of the publication:

Public accessibility is the touchstone for determining whether a document is a printed publication for prior art purposes. In re Bayer, 568 F.2d 1357, 1359 (CCPA 1978). As Patent Owner points out:

A document is publicly accessible if it "has been 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 and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation." Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1333 (Fed. Cir. 2009) (quoting In re Wyer, 655 F.2d 221, 226 (CCPA 1981)).

In support of its position that the Orange Book was indeed a printed publication for prior art purposes, the Petitioner presented declaration testimony from Jarold Newkirk that the Orange Book is a printed publication. "Mr. Newkirk testified that he was an employee of McDonnell Douglas Corporation (and its predecessor Douglas Aircraft Corporation) from 1962-2002, and that, in 1973, he joined the company's commercial aircraft division, where his responsibilities included interior design and customer engineering. Ex. 1008 ¶ 3. Mr. Newkirk testifies to having personal knowledge of the publication and distribution of the Orange Book (specifically, the version dated 1978, which is both Exhibit 1004 and "Exhibit A" to Mr. Newkirk's declaration) to airline customers to provide those customers with customization options for interior cabins for the DC-10 aircraft. Id. ¶¶ 5-6."

In response, the patent owner argued that the crucial question - ignored by the petitioner - is "whether a person of ordinary skill in the art--not necessarily a customer or potential customer of an aircraft manufacturer--could have obtained a copy of the Orange Book by exercising reasonable diligence." The Board rejected the patent owner's distinction and held that "on the present record, the person of ordinary skill and aircraft manufacturer customer are not distinct." The Board further explained that based on the undisputed evidence presented by the petitioner "a person of ordinary skill in the art of the '838 patent is someone having 'a bachelor's degree in mechanical engineering, industrial design, or a similar discipline, or the equivalent experience, with at least two years of experience in the field of aircraft interior design.' Ex. 1009 ¶ 30 (emphasis added)."

The Board therefore concluded that the Orange Book constitutes a printed publication because it was publicly accessible to persons interested, and ordinarily skilled, in the subject matter or art of the '838 patent. See Cordis, 561F.3d at 1333.

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This decision highlights the importance for the parties to give careful attention to the definition of a person of ordinary skill in the art. Often this issue is overlooked or given little consideration. In this case, the Board relied on the fact that the definition was undisputed, i.e., the patent owner either did not challenge it in the preliminary response or it proposed the same definition, and found that, under that undisputed definition, the publication was a printed publication for prior art purposes. C&D Zodiac, Inc. v. B/E Aeropsace, Inc., Case IPR2014-00727 (PTAB Oct. 29, 2014) (Paper 15) (A.P.J. Fitzpatrick)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.