Does a product in a catalog make an invention obvious? GoPro v. Contour IP

A patent is a set of exclusive rights granted to the inventor of an invention. To be granted a patent in the United States an inventor must file an application with the Untied States Patent and Trademark Office which demonstrates that the invention meets all the requirements for a patent. For a patent application to be granted, the application must demonstrate that the invention is new, useful and not obvious. The requirements that an invention be new, useful and not obvious are deceptively simple. Because of decades of case law each of these requirements have very specific meanings which are more complex than they seem.

Where an invention is obvious or not depends on the state of the art and the skills of an ordinary person in the art. This means that obviousness is measured based on the knowledge of an average person who is familiar with the technology related to the invention. The knowledge of an average person is based on prior art. Prior art is any evidence that an invention was already publicly known or available, in whole or in part, before the effective filing date of a patent application. Patents, academic papers, public offers for sale and public use of the invention are some examples of things which qualify as prior art. Secret uses of an invention or publications that do not detail the invention enough to allow an ordinary person in the art to recreate the invention do not qualify as prior art.

The question then becomes whether a sales catalog which discloses an invention is detailed enough to be considered prior art.

A case which deals with this question is GOPRO, INC. v. CONTOUR IP HOLDING LLC, 2017-1894 (C.A.F.C. 2018). GoPro is a consumer product manufacturer that specializes in rugged video cameras for extreme conditions. Contour IP Holdings holds patents on video cameras which allow a user to view and control the camera via a remote device such as a smart phone. GoPro had offered video cameras which can be viewed and controlled remotely more than a year before the filing date for Contour’s patents. GoPro claimed that its product catalog, which was distributed at a trade show more than a year before Contour’s patent filing date, was prior art which rendered Contour’s patents obvious.

GoPro instituted an Inter Partes Review to invalidate Contour’s patents with the Patent Trial and Appeal Board of the United States Patent and Trademark Office. In its final written decision, the Patent Trial and Appeal Board concluded that the GoPro Catalog did not qualify as a prior art printed publication. Specifically, the Patent Trial and Appeal Board concluded that GoPro had not met its burden to show that the GoPro 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 this decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit held that the catalog was prior art. The Federal Circuit stated that the definition of prior art is defined broadly, even relatively obscure documents qualify as prior art so long as the relevant public has a means of accessing them. If a document is accessible to the public, there is no need to prove that the public accessed the document. 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. The Federal Circuit remanded the case to the Patent Trial and Appeal Board to evaluate the merits of GoPro’s unpatentability claims usingthe GoPro Catalog as prior art.

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