United States Court of Appeals
for the Federal Circuit
______________________
GOPRO, INC.,
Appellant
v.
CONTOUR IP HOLDING LLC,
Appellee
______________________
2017-1894, 2017-1936
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-01078, IPR2015-01080.
______________________
OPINION ISSUED: July 27, 2018
OPINION MODIFIED: November 1, 2018 *
______________________
MARK A. LEMLEY, Durie Tangri LLP, San Francisco,
CA, argued for appellant. Also represented by ADAM R.
BRAUSA; KARINEH KHACHATOURIAN, Rimon, P.C., Palo
Alto, CA.
* This opinion has been modified and reissued fol-
lowing a petition for rehearing filed by Appellee.
2 GOPRO, INC. v. CONTOUR IP HOLDING LLC
PAUL MICHAEL SCHOENHARD, McDermott, Will &
Emery LLP, Washington, DC, argued for appellee. Also
represented by IAN BARNETT BROOKS, NICOLE JANTZI.
______________________
Before REYNA, WALLACH, and HUGHES, Circuit Judges.
REYNA, Circuit Judge.
GoPro, Inc. appeals from final written decisions of the
Patent Trial and Appeal Board in two inter partes review
proceedings. In the proceedings, the Board found that the
petitioner, GoPro, did not demonstrate that the chal-
lenged claims are unpatentable as obvious. The Board
based this decision on its conclusion that a certain GoPro
catalog is not a prior art printed publication. We disa-
gree. We vacate and remand for further proceedings
consistent with this opinion.
BACKGROUND
A. The ’954 patent and ’694 patent
Contour IP Holding LLC owns U.S. Patent Nos.
8,890,954 (“the ’954 patent”) and 8,896,694 (“the ’694
patent”). The patents share a common specification that
generally relates to and describes action sport video
cameras or camcorders that are configured for remote
image acquisition control and viewing. 1 ’954 patent, col. 1
ll. 16–17. According to the patents, the claimed device
uses global positioning system (GPS) technology to track
its location during recording and a wireless connection
protocol, such as Bluetooth, to “provide control signals or
stream data to [the] wearable video camera and to access
image content stored on or streaming from [the] wearable
video camera.”
Id. at col. 1 ll. 53–62, col. 16 ll. 50–60.
1 Neither the claim terms nor the claimed inven-
tions are at issue in this appeal.
GOPRO, INC. v. CONTOUR IP HOLDING LLC 3
The patents further describe that “[w]hen recording video
or taking photographs in a sports application, [a] digital
video camera . . . is often mounted in a location that does
not permit the user to easily see the camera.”
Id. at col.
19 ll. 35–37. The digital camera includes wireless com-
munication capability to allow another device, such as a
smartphone or tablet, to control camera settings in real
time, access video stored on the camera, and act as a
“viewfinder” to preview what the camera sees.
Id. at col.
19 l. 38–col. 20 l. 47.
Both the ’954 and ’694 patents claim priority to a pro-
visional application filed on September 13, 2010. Thus,
the one-year critical date is September 13, 2009.
B. Proceedings Before the Board
GoPro petitioned for inter partes review (“IPR”) of the
’954 and ’694 patents on April 20, 2015. GoPro challenged
the patentability of claims 1–30 of the ’954 patent and
claims 1–20 of the ’694 patent on obviousness grounds,
relying on a 2009 GoPro sales catalog (“the GoPro Cata-
log”) as prior art in each petition. The GoPro Catalog
discloses a digital camera linked to a wireless viewfind-
er/controller that allows for a user preview before record-
ing. The Board instituted both IPRs on October 28, 2015,
as IPR2015-01080 2 and IPR2015-01078.
In its decisions to institute, the Board found that Go-
Pro made a threshold showing that the GoPro Catalog is
prior art. In reaching this determination, the Board
concluded that a person of ordinary skill in the art would
have had at least a bachelor’s degree in computer science,
electrical engineering, or a similar discipline, and some
experience creating, programming, or working with
digital video cameras, such as point of view (“POV”) action
2 The Board instituted the IPR as to claims 1, 2,
and 11–30 of the ’954 patent. J.A. 499.
4 GOPRO, INC. v. CONTOUR IP HOLDING LLC
sports video cameras. Critical to its decision, the Board
credited a declaration from GoPro employee, Damon
Jones, relating to the distribution of the GoPro Catalog.
Mr. Jones worked at GoPro from 2008 to 2016 and partic-
ipated in various trade organizations relevant to GoPro’s
business. This included Tucker Rocky Distributing
(“Tucker Rocky”), a trade organization focused on action
sports vehicles as well as related apparel, parts, and
accessories.
In his declaration, Mr. Jones testified that Tucker
Rocky holds an annual dealer trade show, which he
attended in Fort Worth, Texas, from July 23 through July
27, 2009, on GoPro’s behalf. Mr. Jones also testified that
at the 2009 show, there were approximately 150 vendors
and more than 1,000 attendees, including actual and
potential dealers, retailers, and customers of portable
POV video cameras. Mr. Jones stated that he manned the
GoPro booth at the show, where the GoPro Catalog was
displayed, and that he personally distributed the GoPro
Catalog to attendees. Attached to Mr. Jones’s declaration,
GoPro provided the catalog, a vendor list and map of the
Tucker Rocky 2009 show, and email records supporting
Mr. Jones’s statements. The declaration from Mr. Jones
also included testimony that GoPro continued to make the
GoPro Catalog available to GoPro’s actual and potential
customers, dealers, and retailers through its website,
direct mail, and other means of distribution. During the
proceedings, GoPro submitted a supplemental declaration
from Mr. Jones to support statements from his first
declaration.
In its Patent Owner Responses, Contour argued that
GoPro had not demonstrated that the GoPro Catalog was
a prior art printed publication. To support its argument,
Contour submitted two pieces of evidence—a screenshot
from Tucker Rocky’s website from 2009 and a Facebook
webpage for the 2013 Tucker Rocky Dealer Show. The
2009 website screenshot explained that Tucker Rocky is a
GOPRO, INC. v. CONTOUR IP HOLDING LLC 5
wholesale distributor that does not sell to the public. The
2013 Facebook page stated that the 2013 Tucker Rocky
Dealer Show was open to dealers but not the public.
Contour did not depose Mr. Jones.
In its final written decisions, the Board concluded
that the GoPro Catalog did not qualify as a prior art
printed publication under 35 U.S.C. § 102(b). GoPro, Inc.
v. Contour IP Holding LLC, IPR2015–01078, Paper No.
54, at 28 (PTAB Oct. 26, 2016) (“’694 FWD”); GoPro, Inc.
v. Contour IP Holding LLC, IPR2015–01080, Paper No.
55, at 28 (PTAB Oct. 26, 2016) (“’954 FWD”). Specifically,
the Board concluded that GoPro had not met its burden to
show that the GoPro Catalog was disseminated or other-
wise 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. See
’694 FWD, at 28; ’954 FWD, at 27–28. Because all the
instituted grounds were based on the GoPro Catalog, the
Board found that GoPro had not demonstrated that the
challenged claims of the ’954 and ’694 patents were un-
patentable under 35 U.S.C. § 103.
GoPro timely appealed from these final written deci-
sions to this court. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(4)(A).
DISCUSSION
Whether a reference constitutes a printed publication
under 35 U.S.C. § 102(b) 3 is a legal conclusion based on
underlying factual determinations. See In re Lister,
583
F.3d 1307, 1311 (Fed. Cir. 2009). The issue of whether a
3 Because the ’954 and ’694 patents each have an
effective filing date before the effective date of the Leahy-
Smith America Invents Act (“AIA”), references are to the
pre-AIA version of 35 U.S.C. § 102. See Pub L. No. 112-
29, 125 Stat. 284 (2011); 35 U.S.C. § 102 (2006).
6 GOPRO, INC. v. CONTOUR IP HOLDING LLC
reference represents a printed publication is a question of
law that is reviewed de novo. See In re Klopfenstein,
380
F.3d 1345, 1347 (Fed. Cir. 2004). The Board’s findings of
fact, such as public accessibility, are reviewed for sub-
stantial evidence. 5 U.S.C. § 706(2)(E).
Section 102(b) provides that a person shall be entitled
to a patent unless the invention was described in a print-
ed publication more than one year prior to the date of
application for patent in the United States. The printed
publication rule is based on the principle that once an
invention is in the public domain, it can no longer be
patented by anyone. Blue Calypso, LLC v. Groupon, Inc.,
815 F.3d 1331, 1348 (Fed. Cir. 2016).
We have interpreted § 102 broadly, finding that even
relatively obscure documents qualify as prior art so long
as the relevant public has a means of accessing them.
See, e.g., Jazz Pharm., Inc. v. Amneal Pharm., LLC, Nos.
17-1671, -1673, -1674, -1675, -1676, -1677, -2075, --- F.3d
----, slip op. at 11–22,
2018 WL 3400764, at *5–9 (Fed. Cir.
July 13, 2018). For example, we have determined that a
single cataloged thesis in a university library was “suffi-
cient[ly] accessible to those interested in the art exercis-
ing reasonable diligence.” In re Hall,
781 F.2d 897, 900
(Fed. Cir. 1986). Subsequently, we explained that
“[a]ccessibility goes to the issue of whether interested
members of the relevant public could obtain the infor-
mation if they wanted to” and “[i]f accessibility is proved,
there is no requirement to show that particular members
of the public actually received the information.” Constant
v. Advanced Micro-Devices, Inc.,
848 F.2d 1560, 1569
(Fed. Cir. 1988). Accordingly, “[a] reference will be con-
sidered 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.’” Blue
Calypso, 815 F.3d at 1348 (quoting Kyocera Wireless Corp.
GOPRO, INC. v. CONTOUR IP HOLDING LLC 7
v. Int’l Trade Comm’n,
545 F.3d 1340, 1350 (Fed. Cir.
2008)).
The parties do not dispute any of the facts or evidence
presented by GoPro regarding the distribution of its
catalog. In addition, there is no dispute that the Tucker
Rocky Dealer Show occurred before the critical date of the
’954 and ’694 patents. See 35 U.S.C. § 102(b). The princi-
pal issue on appeal is whether the GoPro Catalog was
sufficiently accessible as contemplated under § 102(b).
GoPro argues that the Board erred by finding that Mr.
Jones’s declarations and corroborating evidence were
insufficient to meet its burden of establishing that the
GoPro Catalog was publicly accessible. We agree.
The Board found all the evidence presented by GoPro
credible, 4 but explained that GoPro did not provide evi-
dence that the dealer show was advertised or announced
to the public, such that a person interested and ordinarily
skilled in the art from the public would have known about
it. The Board relied on the evidence presented by Con-
tour, which consisted of statements about the dealer show
being open exclusively to dealers and not the general
public. See J.A. 422–23. Specifically, the Board found
that a person ordinarily skilled in the art would not be
interested in the dealer show because it was not an aca-
demic conference or camera industry conference, but
rather a dealer show for action sports vehicles like motor-
cycles, motorbikes, ATVs, snowmobiles, and watercraft.
See ’694 FWD, at 26–27.
4 See ’694 FWD, at 23 n.9 (“Patent Owner did not
cross-examine Mr. Jones, and does not point to any reason
to doubt the veracity of his testimony. The only issue,
therefore, is whether his testimony and cited exhibits are
sufficient for Petitioner to meet its burden to prove that
the GoPro Catalog is a prior art printed publication.”).
8 GOPRO, INC. v. CONTOUR IP HOLDING LLC
We disagree with the Board’s conclusion that the evi-
dence presented by GoPro failed to satisfy the § 102(b)
requirements. The case law regarding accessibility is not
as narrow as the Board interprets it. The Board focused
on only one of several factors that are relevant to deter-
mining public accessibility in the context of materials
distributed at conferences or meetings. The Board cited
no cases where we have strictly held that the expertise of
the target audience is dispositive of the inquiry of accessi-
bility. Cf. Medtronic v. Barry,
891 F.3d 1368, 1382 (Fed.
Cir. 2018) (“The expertise of the target audience can be a
factor in determining public accessibility. But this factor
alone is not dispositive of the inquiry.” (citations omit-
ted)). Rather, our case law directs us to also consider the
nature of the conference or meeting; whether there are
restrictions on public disclosure of the information; expec-
tations of confidentiality; and expectations of sharing the
information.
Id. at 1382–83. When direct availability to
an ordinarily skilled artisan is no longer viewed as dispos-
itive, the undisputed record evidence compels a conclusion
that the GoPro Catalog is a printed publication as a
matter of law.
Trade shows are not unlike conferences—a trade show
is directed to individuals interested in the commercial and
developmental aspects of products. If one desires to
examine certain new products on the market, attending a
trade show involving identical or similar products is a
good option. Mr. Jones testified that Tucker Rocky holds
an annual trade show that draws thousands of attendees.
In 2009, GoPro participated in the Tucker Rocky Dealer
Show as a vendor and had a demonstration booth at the
show. Mr. Jones personally attended the show on behalf
of GoPro and operated the demonstration booth. He
testified that there were over 150 vendors, 1,000 at-
tendees, and that GoPro displayed and distributed hun-
GOPRO, INC. v. CONTOUR IP HOLDING LLC 9
dreds of copies of the GoPro Catalog to attendees at the
show without restriction. 5
The fact that the dealer show is focused on action
sports vehicles is not preclusive of persons ordinarily
skilled in the art from attending to see what POV digital
cameras were being advertised and displayed. As de-
scribed in the patents, a primary purpose of POV cameras
is for use on vehicles in extreme action environments,
such as the ones advertised at the Tucker Rocky Dealer
Show. 6 See, e.g., ’954 patent, col. 12 ll. 42–45 (“Because
base mount 130 can be flexible, it can be attached to a
variety of surfaces such as, for example, the surfaces of
helmets, snowboard decks, skis, fuel tanks, windows,
doors, and vehicle hoods.”);
id. at col. 16 ll. 39–49 (“Digital
video camera 10 is an all-in-one, shoot and store digital
video camcorder and is designed to operate in extreme
weather conditions and in a hands-free manner. Digital
video camera 10 is wearable and designed for rugged
environments (water, heat, cold, extreme vibrations), and
the Contour 1080P™ system includes application mounts
126 to attach to any person, equipment, or vehicle. The
internal components of digital video camera 10 may be
silicon treated, coated, or otherwise insulated from the
5 Mr. Jones also submitted a supplemental declara-
tion testifying that the GoPro Catalog was made available
through GoPro’s website, direct mail, and email. J.A.
5000–01. We do not reach whether this testimony stand-
ing alone was sufficient to meet GoPro’s burden, as we
find that distribution at the dealer show was sufficient.
6 Contour’s screenshot of the Tucker Rocky website
states that “[Tucker Rocky Distributing] stock[s] and
sell[s] over 75,000 items for street bikes, off-road motorcy-
cles and ATVs, as well as all the accessories and apparel
needed by the people that ride them.” J.A. 5644 (empha-
sis added).
10 GOPRO, INC. v. CONTOUR IP HOLDING LLC
elements, keeping digital video camera 10 operational, no
matter the mud, the dirt, the snow, and the rain.”).
Although the trade show was only open to dealers,
there is no evidence or indication that any of the material
disseminated or the products at the show excluded POV
action cameras, or information related to such cameras.
This is especially true in light of the evidence that Tucker
Rocky is a trade organization directed to action sports
vehicles and accessories related thereto. J.A. 4319.
The Board concluded that the GoPro Catalog was not
a printed publication because the Tucker Rocky Dealer
Show was not open to the general public 7 and GoPro
failed to provide evidence that someone ordinarily skilled
in the art actually attended the dealer show. But, the
standard for public accessibility is one of “reasonable
diligence,” Blue
Calypso, 815 F.3d at 1348, to locate the
information by “interested members of the relevant pub-
lic.”
Constant, 848 F.2d at 1569 (emphasis added). Mr.
Jones testified that the dealer show was attended by
actual and potential dealers, retailers, and customers of
POV video cameras. Additionally, the GoPro Catalog was
disseminated with no restrictions and was intended to
reach the general public. Based upon Mr. Jones’s testi-
mony, the evidence provided by GoPro regarding the
Tucker Rocky Dealer Show, and the evidence of the Tuck-
er Rocky Distributing website, we conclude that GoPro
met its burden to show that its catalog is a printed publi-
cation under § 102(b).
Because the Board refused to accept the GoPro Cata-
log as a printed publication, it did not consider the merits
of GoPro’s obviousness claims. See J.A. 61 (“[Since GoPro]
7 The Board relied on evidence that Tucker Rocky is
a membership organization and wholesale distributor
that does not sell to the public. J.A. 24–25.
GOPRO, INC. v. CONTOUR IP HOLDING LLC 11
has not established that the GoPro Catalog is a prior art
printed publication under 35 U.S.C. § 102(b), . . . we
determine that [GoPro] has not shown, by a preponder-
ance of the evidence, that the challenged claims are
unpatentable based on [GoPro’s] asserted grounds.”). On
remand, the Board shall consider the GoPro Catalog as
prior art and evaluate the merits of GoPro’s unpatentabil-
ity claims. Cf.
Lister, 583 F.3d at 1317 (vacating and
remanding obviousness determination based on erroneous
consideration of printed publication).
CONCLUSION
We vacate the Board’s decision that claims 1–20 of the
’694 patent and claims 1, 2, and 11–30 of the ’954 patent
are not unpatentable and remand for further proceedings
consistent with this opinion.
VACATED AND REMANDED
COSTS
No costs.
