Federal Circuit says PTAB too narrowly interpreted case law regarding prior art publications in GoPro


On Friday, July 27th, the Court of Appeals for the Federal Circuit issued a precedential opinion in GoPro, Inc. v. Contour IP Holdings, vacating a final written decision coming from the Patent Trial and Appeal Board (PTAB) that had upheld patent claims in the face of a validity challenge petitioned by action camera company GoPro. The Federal Circuit panel of Circuit Judges Jimmie Reyna (author of the opinion), Evan Wallach and Todd Hughes found that the PTAB had erred in finding that a 2009 GoPro catalog did not qualify as a prior art printed publication for rendering the challenged claims invalid for obviousness.

There are two patents at issue in this case which have now been remanded back to the PTAB for further proceedings:

  • U.S. Patent No. 8890954, titled Portable Digital Video Camera Configured for Remote Image Acquisition Control and Viewing. Issued to Contour in November 2014, it covers an integrated, hands-free, portable, wearable, viewfinderless point of view (POV) digital video camera equipped with a wireless Internet protocol and a global navigation and location positioning system.
  • U.S. Patent No. 8896694, same title as the ‘954 patent. Also issued to Contour in November 2014, it claims a POV digital video camera system with GPS and Bluetooth capabilities for capturing action video, tracking data such as speed and elevation, as well as posting video online.

Contour IP, the patent owner, first asserted both of these patents against GoPro in a patent infringement suit filed in November 2015 in the District of Delaware; that case was transferred to the Northern District of California in August 2017. However, in April 2015, about six months before the patents were asserted against GoPro in Delaware, GoPro petitioned the PTAB for inter partes review (IPR) proceedings challenging the validity of both patents.

In both IPR petitions, GoPro submitted a 2009 sales catalog as prior art; the catalog disclosed a digital camera linked to a wireless viewfinder/controller that enables a user to preview the image before recording. Although the PTAB instituted both IPRs after making a determination that GoPro made a threshold showing that the catalog is prior art, both IPRs terminated in final written decisions which concluded that the catalog wasn’t disseminated or otherwise made available to the extent that persons ordinarily skilled in the art could have located it by exercising reasonable diligence.

On appeal, the Federal Circuit found that the PTAB erred in determining that a declaration from a GoPro employee, along with corroborating evidence, wasn’t sufficient to establish public accessibility of the catalog. The GoPro employee had testified that GoPro made the catalog accessible during an action sports vehicle trade show that occurred in July 2009, prior to the critical date of September 13th, 2009 (one year prior to the date of priority for both the ‘954 and ‘694 patents). The PTAB held that the dissemination at this trade show did not make the catalog publicly accessible because the trade show was only open to dealers and not the general public.

“The case law regarding accessibility is not as narrow as the Board interprets it,” the Federal Circuit found, noting that the PTAB only focused on one of several factors for determining public accessibility. Although the trade show was focused on action sports vehicles, the attendees were likely more sophisticated in that space than average consumers, making it more than likely that attendees were also skilled and interested in POV action cameras. “A dealer show focused on extreme sports vehicles is an obvious forum for POV action sports cameras,” the Federal Circuit’s opinion reads. The general public may not have been aware of the trade show but the appellate court found that dealers of POV action sports cameras would be part of the relevant audience. Thus, the Federal Circuit vacated the PTAB’s determination that the GoPro catalog was not prior art and remanded the case for further proceedings.


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