As the Trade Show Season Ramps Up, Don’t Forget to Harvest Your Patentable Inventions Before Heading to the Show

By: Sean D. Detweiler
September 10, 2018

On July 27, 2018, in GoPro, Inc. v. Contour IP Holding, LLC, the U.S. Court of Appeals for the Federal Circuit held that a sales catalog distributed at a dealer trade show not open to the general public was publicly accessible and therefore qualified as a prior art printed publication under 35 U.S.C. Section 102(b) (2018 WL 3596007 (Fed. Cir. July 27, 2018)).

Prior art is any evidence that your invention was already known prior to your coming up with it. For your invention to be patentable, it needs to be compared with known “prior art” to determine whether your invention is sufficiently new or novel and not obvious in view of the known prior art to warrant patent protection. Printed publications are one category of prior art that can provide that evidence against the patentability of your invention.

Contour IP Holding, LLC owns US Patent Nos. 8,890,954 (the ‘954 patent) and 8,896,694 (the ‘694 patent), which are directed to sports video cameras configured for remote image acquisition control and viewing. In July of 2009, which was more than one year before the earliest priority date of Contour’s patents (thereby qualifying to be relevant prior art), GoPro, Inc. distributed a sales catalog at a dealer trade show for action sports vehicles disclosing a digital camera linked to a wireless viewfinder/controller that allows viewer preview before recording.

GoPro petitioned for inter partes review (IPR) of the ‘954 and ‘694 patents, challenging their patentability based on obviousness in view of prior art not previously considered. The prior art GoPro relied upon was the GoPro sales catalog, identifying it as a prior art printed publication. The Patent Trial and Appeal Board (PTAB) instituted IPR and concluded that the GoPro sales catalog was not prior art because there was no evidence it was publicly available because the trade show was not open to the general public and it would be unlikely that a person of ordinary skill in the art of digital video cameras would have attended the trade show for action sports vehicles. Therefore, the patents withstood the IPR challenge.

However, GoPro appealed to the Federal Circuit, which based its decision on the sales catalog’s public accessibility. The court explained that accessibility requires persons interested and ordinarily skilled in the relevant subject matter exercising reasonable diligence to be able to locate the reference. Considering the nature of the conference or meeting, any restrictions on public disclosure of the information, and any expectations of confidentiality or information sharing, the Federal Circuit determined that the catalog did qualify as prior art. Specifically, persons of ordinary skill in the art of action cameras would attend a trade show focused on action sports vehicles because cameras would be used with such vehicles; there was no evidence that the show excluded action cameras; people interested in action vehicles would also be interested in action cameras; and such people would have been aware of the trade show. Importantly, the GoPro catalog was distributed at the show without any restrictions, and it was intended to reach the general public.

The Federal Circuit vacated the PTAB’s decision and remanded the case for consideration of the merits of GoPro’s obviousness claims in view of the prior art sales catalog.

A takeaway here is that marketing materials, printed publications, videos, displays, or other technical descriptions of a new technology that may be distributed at a trade show can qualify as prior art. While many businesses rightfully focus on pushing product and technology development with an eye toward revealing their advancements as quickly as possible at the next big trade show, they should not forget to confer with a patent attorney early in the process. In the United States, the grace period for filing a patent application is one-year following activities such as public disclosure, offers for sale, actual sales, or the like, of the technology. International patent rights for the most part are permanently lost at the time of such activities (i.e., there is no one-year grace period). To prevent loss of rights in your invention or technology, be sure to have systems in place to identify new inventions within your organization, harvest them, and protect them by working with your patent attorney to file patent applications prior to going to the trade shows or other similar activity.

For more information, please contact Sean Detweiler.