User Manuals, Reverse Engineering Reports, and Other Commercial Documents: When Are They Publicly Accessible?

Intellectual Property Alert

In Cisco Systems, Inc. v. Centripetal Networks, Inc., IPR2018-01436, Paper 40, at 23 (PTAB Jan. 23, 2020), the Patent Trial and Appeal Board clarified how a reference tied to a commercial product could qualify as a “printed publication” under 35 U.S.C § 102(b). The Petitioner, Cisco, challenged all claims of the disputed patent as obvious, relying solely on a user manual (“Sourcefire”) for a prior art system. Copies of the Sourcefire manual had been distributed on documentation disks (CDs and DVDs) accompanying each purchased system, which retailed between $1,300 and $25,000 depending on the specific configuration. Copies could also be found online but required a login and password. In the two years leading up to the filing date of the patent, approximately 586 customers had purchased the system and received the Sourcefire manual.

The parties disputed whether the user manual was sufficiently “publicly accessible” to constitute a printed publication. The Board identified two lines of cases that help determine if a document was “publicly accessible.” In the first line of cases, usually applying to manuscripts or dissertations stored in libraries, courts asked whether the document was sufficiently indexed, catalogued, and shelved. See, e.g., In re Hall, 781 F.2d, 897, 898–99 (Fed. Cir. 1986). In the second line, usually applying to information displayed at meetings and trade shows, courts looked to see if there was sufficient dissemination during the event. See, e.g., Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018); In re Klopfenstein, 380 F.3d 1345, 1359 (Fed. Cir. 2004). The Board further noted that “a work is not publicly accessible if the only people who know how to find it are the ones who created it.” See Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019).

The Board held that a document accompanying a commercial product fell in the “dissemination” line of cases and thus did not require indexing. In determining that there was sufficient dissemination, the Board highlighted several factors. First, the system was available to the general public, advertised to the general public, and there were no obligations of confidentiality placed on the user manual. Second, the 586 purchasers of the system were likely people of ordinary skill in the art (“POSA”) and the number of disclosures far exceeded the number that is generally required in dissemination cases. See Mass. Inst. of Tech. v. AB Fortia, 774 F.2d 1104, 1109 (Fed Cir. 1985) (where dissemination of a conference paper to six persons rendered it a printed publication). Finally, the Board rejected suggestions that the high price of the product weighed against a finding that the manual was publicly accessible. The Board seemed unfazed by the price, asserting that the Patent Owner never established that an interested POSA would have found the price a deterrent, and noting that 586 customers actually bought the system.

This case provides a few pointers for those seeking to establish a commercial document as a printed publication. First, the document or the product it accompanies should be sold and advertised to the general public, and there should be no obligations of confidentiality on the document. Second, the price of the relevant product is not as important as the number of purchasers (here, 586 purchasers far exceeded the threshold) and who the purchasers are (here, the purchasers were POSAs). Finally, to argue that a reference is not publicly accessible based on price, a party should not only establish that a high price would have prevented an interested POSA from purchasing the specific product but also show that there were few actual purchases of the product. From this case, it would appear that many commercially sold documents could qualify as printed publications despite high price tags as long as the documents were available without distribution restrictions and acquired by even modest numbers of purchasers. However, documents deemed confidential or sold with distribution restrictions, like most reverse engineering reports, are unlikely to qualify as printed publications.