Background
GoPro and Contour are competing makers of action cameras. Contour holds patents claiming designs and features for action cameras. GoPro challenged Contour’s patents at the PTAB through inter partes review, arguing that a GoPro product catalog distributed at a trade show before the Contour patent applications were filed rendered Contour’s claims invalid as obvious.
The catalog was physically handed out at the 2009 Outdoor Retailer Summer Market trade show, a major industry event attended by dealers, retailers, and enthusiasts in the outdoor sports market. GoPro’s employees could account for when and how the catalogs were distributed at the event. The PTAB, however, found that GoPro had not sufficiently proved the catalog was publicly accessible because there was limited evidence of how the materials were managed, whether they were formally indexed, or whether interested persons could have independently located them.
GoPro appealed, arguing the PTAB had applied too strict a standard for what constitutes a “printed publication” under the Patent Act.
The Court’s Holding
The Federal Circuit vacated and remanded the PTAB’s decision. The court held that the PTAB had applied an overly narrow reading of the “public accessibility” standard for printed publications. Under Federal Circuit precedent, a document is publicly accessible—and thus qualifies as prior art—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 court identified multiple factors relevant to assessing public accessibility of conference materials: (1) whether the conference was open to the public; (2) whether the materials were distributed without restriction; (3) whether the materials were inventoried or indexed in any catalog or database; (4) whether the subject matter would have interested skilled artisans; and (5) the length of time the materials were available. The PTAB had focused too narrowly on formal indexing and had ignored evidence that the catalog was freely distributed at an open trade show to exactly the relevant audience.
Because the PTAB had refused to consider the GoPro catalog as prior art at all, it had not assessed whether Contour’s claims were obvious in light of that catalog. The Federal Circuit remanded for the Board to conduct that analysis.
Key Takeaways
- A catalog or other document physically distributed at a public trade show or conference to industry attendees can qualify as a “printed publication” under 35 U.S.C. § 102 and serve as prior art against a later patent application.
- Public accessibility does not require formal indexing, library archiving, or an internet presence; distribution to the relevant technical community at an open trade event can suffice.
- Multiple factors bear on accessibility—the PTAB erred by treating absence of formal indexing as determinative rather than as one of many relevant considerations.
- Companies that distribute catalogs, data sheets, or product literature at open industry events may be creating prior art that can later defeat patent claims on disclosed products.
Why It Matters
The “printed publication” standard is crucial in determining what prior art can be used to challenge a patent’s validity. In the modern era of trade shows, conferences, and product launches, companies regularly distribute promotional materials that describe new products in detail. GoPro v. Contour confirmed that such materials—even when not formally cataloged or archived—can constitute anticipating or obviating prior art if distributed to the relevant technical audience.
For patent applicants, this means that industry events attended before a patent filing deadline can generate prior art risks, even from materials that are not easily searchable after the fact. For patent challengers, the decision opens up a broader category of documents—conference proceedings, trade show handouts, product launches—as potential weapons in IPR and litigation invalidity challenges. The ruling is a reminder that what happens at trade shows may not stay at trade shows when it comes to patent validity.