Federal Circuit Finds Mere Registration in Copyright Office Insufficient to Show Printed Publication Was Available for Purposes of 35 U.S.C. 102(b)

In In re Richard S. Lister, 92 USPQ2d 1225 (Fed. Cir. 2009), Dr. Richard Lister appealed a decision made by the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (BPAI) affirming the rejection of claims 21-25 of Lister’s patent application. Dr. Lister is a clinical psychologist who had devised a modification to the standard method of playing golf.  The modification allowed players to place, or tee up, their balls on any shot being attempted, except for when the ball was in a hazard area or on the putting green.  Dr. Lister drafted a manuscript describing his method of playing golf, entitled “Advanced Handicap Alternatives for Golf” and submitted the manuscript to the U.S. Copyright Office on July 4, 1994 and the certificate of registration was issued on July 18, 1994. 

In addition to the copyright obtained on the manuscript, Dr. Lister learned that he should file a patent to further protect his method of playing golf, and he subsequently filed for a patent with the USPTO on August 5, 1996.  The patent application had been under prosecution for over 10 years, having been rejected and amended multiple times, as well as being appealed twice to the BPAI.  In the final rejection dated January 31, 2003, the Examiner had rejected claims 21-25 under 35 U.S.C. §§102(a) & (b) as being anticipated by the Lister manuscript filed with the Copyright Office. 

The BPAI affirmed the rejection under 35 U.S.C. §102(b) but reversed the rejection under 35 U.S.C. §102(a).  The rejection under 35 U.S.C. §102(a) was reversed because the BPAI noted that 35 U.S.C. §102(a) bars the patenting of inventions that were described in a printed publication before the applicant’s date of invention.  Thus, because the manuscript filed by Lister with the Copyright Office, which is the printed publication describing Lister’s method of playing golf, was used for the rejection under 35 U.S.C. §102(a) and was filed after Lister invented his method of playing golf, the manuscript does not qualify as a valid reference under 35 U.S.C. §102(a).  The 35 U.S.C. §102(b) rejection was affirmed because 35 U.S.C. §102(b) bars the patenting of inventions that were described in a printed publication more than one year before the applicant’s date of filing.  Lister’s date of filing the patent application was August 5, 1996 while the certificate of registration of the manuscript filed by Lister was issued on July 18, 1994.  However, in citing In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), the BPAI noted that the manuscript must be publicly available in order to qualify as a printed publication. 

The BPAI took the date of July 18, 1994, when the Copyright Office issued the certificate of registration, as when the manuscript was publically available because the Copyright Office maintained a searchable database of titles.  The BPAI asserted that an interested party could find the manuscript by conducting a title search using the keywords “golf” and “handicap” and that the interested party could view the manuscript at the Copyright Office.  Lister counter argued that the difficulty imposed by both travelling to the Copyright Office to view the document, and not being able to obtain a copy of the manuscript, as per the Copyright Office’s rules, rendered the manuscript as not being publically available.  Additionally, Lister argued that the BPAI erred in relying on Klopfenstein because In re Hall, 781 F.2d 897 (Fed. Cir. 1986) and In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) were more factually relevant and that because there was no evidence that the manuscript was not actually accessed by anyone, the manuscript was not publically available. 

The BPAI viewed the inventive concept of the manuscript as being straightforward enough that it could be understood and remembered by merely reading the manuscript, and thus, the interested party would not need to obtain a copy to understand the inventive concept in Lister’s manuscript.  Furthermore, the BPAI concluded that actual evidence of a publication being accessed was not a requirement under SRI International, Inc. v. Internet Security Systems, Inc., 511 F.3d 1186, 1197 (Fed. Cir. 2008).  Additionally, the BPAI further noted that because Klopfenstein discussed both Cronyn and Hall, Klopfenstein was relevant to library cases.  Lister appealed the BPAI’s decision to affirm the rejection of claims 21-25 under 35 U.S.C. §102(b).  The U.S. Court of Appeals for the Federal Circuit vacated and remanded the BPAI’s decision.

The Federal Circuit focused on the factual determinations made to assess whether a document qualifies as a ‘printed publication’ under 35 U.S.C. §102.  One requirement of qualifying as a ‘printed publication’ is that the document be publically accessible.  The Federal Circuit stated that “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available or the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’  Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (2008).”  The Federal Circuit Court went on to note that prior cases consider a variety of factors in determining public accessibility, such as research tools directing an interested party to a relevant document and whether a document is cataloged and shelved at a library.

In comparing In re Bayer, 568 F.2d, 1357, 1361 (CCPA 1978), and Hall, the Federal Circuit quoted Cronyn at 1161 for the proposition that “the critical difference between [Bayer and Hall] that explains the different results is that on the critical date in Bayer the thesis was ‘uncatalogued and unshelved’ and therefore not accessible to the public, whereas in Hall the ‘dissertation was accessible’ because it had been indexed, cataloged and shelved.”  The Federal Circuit went on to note that in Cronyn, a thesis, stored in an academic department library at Reed College, was listed in a card catalogue containing thesis titles and author names.  While the card catalogue was available to the public, the individual cards were filed according to the author’s name rather than by thesis title or subject matter.  Thus, in Cronyn, the court found that the theses were not publically accessible because they were not catalogued in a meaningful manner. 

However, the Federal Circuit went on to say note that cataloging and indexing are not absolute requirements to show publically accessible. In summarizing several other cases that pointed to factors other than cataloging and indexing, the Federal Circuit stated that all of the surrounding facts and circumstances must be considered to determine “whether an interested researcher would have been sufficiently capable of finding the reference and examining its contents.” 

In addressing the specifics of Lister’s appeal and arguments, the Federal Circuit considered two factors: 1) availability for inspection; and 2) existence and adequacy of an index.  With respect to the first factor, Lister asserted that the case of Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 936-937 (Fed. Cir. 1990), was relevant to the facts of Lister’s case.  Lister argued that the difficulty in accessing the document, arising from having to travel to the Copyright Office to view the document and the Copyright Office not providing copies of the document, disqualify the document from being considered to be generally available.  Lister offered a letter from the Copyright Office, dated September 4, 2004, stating that there had been no requests for inspection of the manual, as evidence of the document’s lack of general availability.  

The Federal Circuit noted a critical difference between Northern Telecom and the facts surrounding Lister’s case, that being where the documents were stored.  In Northern Telecom, the documents were stored in a Mitre Corp. office library, which was restricted to use by Mitre employees, whereas Lister’s manuscript was accessible to the general public while being stored at the Copyright Office.  Additionally, in citing to Hall at 899-900, the Federal Circuit noted that even if significant travel is required to access a document, it may still be considered as publically accessible.  Furthermore the Federal Circuit cited several cases and stated that once a document is shown to be accessible, it is not necessary to show that the document was actually accessed.  Lastly, the Federal Circuit Court agreed with the BPAI is finding that an interested party would be able to understand and recall the invention disclosed in Lister’s manuscript without having an individual copy.  Thus, the Federal Circuit found that an interested person could inspect the Lister manuscript at the Copyright Office. 

Next, the Federal Circuit turned to whether an interested person would have been able to access and inspect the Lister manuscript for potential relevance before the critical date of one year prior to Lister’s date of filing his patent application.  Lister argued that the catalogs and databases, cited by the BPAI as listing Lister’s manuscript, would not have been adequate to direct an interested party to his manuscript and that, adequacy aside, there was no evidence that the manuscript was listed on the catalogs and databases before the critical date.  Three databases:  the Copyright Office’s automated catalog, and the commercial databases provided by Westlaw and Dialog, were discussed by the Federal Circuit Court. 

Lister argued that none of the databases or catalogs listed the manuscript in a “meaningful way,” as Cronyn requires.  The Federal Circuit stated that Lister “asserts that neither searching by author nor the first word in the title (“Advanced”) would guide a researcher interested in his golfing method to the manuscript.”  Additionally, in the oral argument of the case, the government conceded that the Copyright Office’s database alone was not sufficient in making the manuscript publically available.  However, while the Westlaw and Dialog databases allowed for searching the titles of manuscripts by keywords, Lister argued that the BPAI’s conclusion that an interested party would find the manuscript by searching for “golf” and “handicap” did not account for the fact that such a search would result in hundreds or thousands of irrelevant manuscripts.  Additionally, Lister argued that “handicap” was a poor term to describe his invention because it was not used in any of the claims of his patent application. 

In response, the Federal Circuit stated that Lister’s arguments impose too rigid of a test as to whether an interested party can find a reference.  The Federal Circuit summarized Lister’s test as being “whether an individual, selecting terms from the claim language, could execute a single keyword search that would yield all relevant references including the anticipatory reference.”  Rather, the Federal Circuit Court stated that the test is “whether [the anticipatory reference] could be located by “persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence.”  Kyocera, 545 F.3d at 1350.”  The Federal Circuit went on to note that they agreed with the BPAI that a diligent researcher would be inclined to use the word “handicap” in a keyword title search when researching ways to expedite a game of golf.  Thus, the Federal Circuit concluded that the Lister manuscript was publically accessible on the date it was listed in either the Westlaw or Dialog databases. 

Lastly, the Federal Circuit Court addressed the issue of whether the Lister manuscript was publically accessible one year prior to Lister’s application filing date, as is required under 35 U.S.C. §102(b) in order to bar patentability.  Lister argues that there is no evidence that his manuscript was available before the critical date of August 5, 1996.  The Federal Circuit Court goes on to quote MPEP §2128, which states:

“Prior art disclosures on the Internet or on an on-line database are considered to be publicly available as of the date the item was publicly posted.  Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C. §102(a) or (b).”

The government provided two arguments in response, neither of which the Federal Circuit Court found persuasive. 

The first argument relied upon the government’s assumption that Lister’s use of the word “directly” in stating that “[t]he information contained in [the commercial] databases comes directly from the Library of Congress,” means that the manuscript was listed in the commercial databases soon after Lister’s certificate of registration was issued on July 18, 1994.  However, the Federal Circuit Court stated that “directly” has no bearing on the timing of commercial database updates.  Additionally, the Federal Circuit noted that the government provided no evidence with respect to general practices of database updating for the Copyright Office, Westlaw and Dialog. 

The second argument was that, upon the government making a prima facie showing that the manuscript was listed in the commercial databases, the burden then shifted to Lister to show that the manuscript was not in either commercial database before the critical date.  However, the Federal Circuit Court stated that “[w]e do not agree that the government has established a prima facie case that warrants shifting the burden to Dr. Lister.”  The Federal Circuit went on to state that absent any evidence of the typical time that elapses between copyright registration and the incorporation of the Copyright Office’s catalog in the commercial databases, any presumption on those matters would be pure speculation.  Thus, the Federal Circuit rejected both of the government’s arguments and concluded that the BPAI erred in affirming the examiner’s §102(b) rejection, vacated the BPAI’s decision and remanded the case.

In summary, the Federal Circuit Court found that with the commercial databases, which provide keyword title searching, the anticipatory reference could be found by “persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence.”  Kyocera, 545 F.3d at 1350.  However, because there was no evidence as to the manuscript being listed on the commercial databases before the critical date, it can not be shown that the Lister manuscript was publically accessible before the critical date.  Therefore, the Lister manuscript does not qualify as an anticipatory reference under 35 U.S.C. §102(b), under the circumstances on which it was relied upon by the Examiner. 

Significance to Patent Applicants

In re Richard S. Lister addresses a situation becoming all-too-common during examination: documents whose publication date is unverified.  Often this situation arises with documents pulled from the internet.  As demonstrated in In re Richard S. Lister, where the Examiner finds a document on a network and applies the document as part of a rejection, it is the Examiner who must provide evidence that the document was sufficiently available on a date usable under 35 U.S.C. §102 to qualify as a publication.  Where this evidence is lacking, the applicants are entitled to contest the Examiner’s prima facie novelty or obviousness case by noting that there is insufficient evidence of availability.

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