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 IPR2015-010802 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).
`
`

`

`
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` 6
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` 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.
`
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`

`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.”).
`
`

`

`
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` 8
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` 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
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`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).
`
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`

`
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` 10
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` 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 public7 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.
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`GOPRO, INC. v. CONTOUR IP HOLDING LLC
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`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.
`
`
`