BPAI Considers Whether a Purchased Publication is Publicly Available
In preparing a request for reexamination, often times, user manuals and other proprietary documents are uncovered. As discussed back in March,the degree of public accessibility of such references is key to determining whether or not a given reference qualifies as prior art. In the March decision, public accessibility was not found for a reference limited to confidential distribution among members of a technical group.
Yesterday in Ex ParteePlus Inc, the BPAI considered an appellant’s theory that a proprietary user manual was not publicly accessible since it required a purchase, and included boiler plate language identifying its proprietary nature.
In considering the public accessibility of user manuals sold together with a product, the Board explained:
Appellant argues that the manuals were designed for use by those who licensed the associated computer software and all were indicated to be kept confidential, such that the authors of those manuals did not act to disseminate or otherwise make the manuals available (App. Br. 24-26). The Examiner finds that none of the operating manuals were confidential documents disseminated to a closed group, as any member of the public was able to purchase the software, and obtain access to the publications (Ans. 8). We agree with the Examiner.
We find much of Appellant’s arguments address the nature of the three applied manuals, and how those manuals were to be maintained in confidence (App. Br. 24-27). Appellant asserts that the manuals “were only accessible to a closed group of licensees of the respective software associated with the manuals” (App. Br. 25). While we agree with Appellant that the documents bear legends restricting reproduction and copying (Reply Br. 9), that does not rise to the level of confidentiality at issue here. Rather, we find that this speaks to the software and the manuals being proprietary. We find that most software and the manuals that come with such software would contain restrictions on copying and further distribution, but that would not rise to the level of those items being considered confidential disclosures. Considerations of such confidentiality would require restrictions on who could purchase or otherwise obtain the specific documentation, which has not been shown with respect to the cited manuals.. . . . . .
The requirement of purchasing software to obtain a manual goes to its cost and not its accessibility.
The rejection of the reexamined ePlus claims (24-45), of U.S. Patent 6,023,683 were affirmed. The patent was previously litigated in the EDVA against defendants SAP and Ariba Inc., both of which settled with ePlus. For more recent background on the ongoing ePlus campaign see the 2010 post (here)