As I explained in my first post on the “printed publication” aspect of section 102, “we should interpret section 102’s ‘printed publication’ requirement such that we confer ‘printed publication’ status on information that is strongly likely cheaper to locate in response to a problem than to recreate from scratch in response to that problem.” This approach is an effort to link our interpretion of “printed publication” to our basic reasons for having novelty requirement in the first place.

In my second post, I summarized the CCPA’s 1981 decision in Wyer. In Wyer, the court held that a laid-open Australia patent application was a prior art “printed publication” due to the classified, indexed abstract of the patent (which included claim 1 of the application) and the availability of microfiche copies of the application at six different Australia patent office locations. Rather than parse the “printed publication” inquiry into two parts (is it printed? is it a publication?), the Wyer court approached the question as a unitary one about public accessibility. As I explained,

Under this unitary concept, “the question to be examined … is the accessibility to at least the pertinent part of the public, of a perceptible description of the invention, in whatever form it may have been recorded.� Id. “Access,� in turn, “involves such factual inquiries as classification and indexing.� Id. Can people in the art, “exercising reasonable diligence,� id., locate and understand the reference? If so, it’s publicly accessible.

This brings us back to the Federal Circuit’s decision earlier this month in Bruckelmyer. More after the jump.

The invention in the case is a method for thawing frozen ground to prepare it for a layer of concrete. The Bruckelmyer majority, over Judge Linn’s dissent, concludes that two drawings contained in a laid-open Canada patent application from 13 years earlier are “printed publications” and thus prior art. This case would be on all fours with Wyer if the Canada application in question were findable by means of a properly classified and indexed abstract. But instead this case adds a new wrinkle: The application in question matured into a Canada patent, a patent which did not include those two drawings from the originally filed application. Instead, the prior art patent merely stated that the thawing method there disclosed could be used for “thawing frozen ground.” Slip op. at 3.

We can see, in the context of Bruckelmyer, that ordinary artisans exercising reasonable diligence can find the Canada patent quite readily. Would such interested persons, reading the Canada patent, invest more time and money to retrieve the full file history (which, one must concede, is a publicly available document) to determine if it discloses more than the finally issued patent does? (According to the court, there was never any abstract for the Canada application.) This is factually different from the Wyer scenario, where the ordinary artisan knows that the indexed abstract is merely a highly compressed summary of the underlying document. Can this factual difference support a legal distinction?

The Bruckelmyer majority answers this question “no.” Judge Linn answers “yes.” The debate is framed as one about whether the Canada patent’s mention of using the method described therein to thaw frozen ground would prompt one to examine the underlying file history. The majority views Wyer as “[c]ontrolling” (which it’s not, because it can be distinguished legitimately if the court cares to):

Indeed, it would be inconsistent to determine that one skilled in the art could have located a foreign patent application based on information in a published abstract, as our predecessor court found in In re Wyer, but not here, where there was an issued patent. After all, an issued patent is presumably more informative of the content of its application file than a mere abstract of the patent application. Moreover, there is no genuine dispute that the [Canada] patent was classified and indexed, as the abstract was in Wyer, further providing the roadmap that would have allowed one skilled in the art to locate the [Canada patent] application.

Slip op. at 8 & 9. Judge Linn disagrees about whether the ordinary artisan would infer from patent text that the file history should be consulted:

An abstract, which is similar in many respects to a library index card, is a brief statement of the contents of something else; i.e., the more extensive text to which it refers. It is intended to serve as a tool to steer researchers to the content of a larger and more comprehensive work. … On the other hand, the printed text of an issued patent — including the abstract, written description, and claims — is not necessarily looked to as a summary or index of the underlying file history. … [R]esearchers normally expect the text of printed patents to correspond to and be coextensive with the applications from which they have been issued. In that sense, the text of an issued patent does not generally serve to guide researchers to the file history for a more expansive disclosure of the described invention, and it certainly does not lead researchers to the file history for disclosure of subject matter not described in the issued text.

Slip op. at 2. Judge Linn thus highlights the way in which Wyer shows that less is more and Bruckelmyer shows that more is less.

This is a hard case. I think Judge Linn has the better of the argument about how the ordinary artisan would react upon seeing the patent text, feeling no need to retrieve the underlying file history documents. The majority, however, is surely giving a reasonable answer to the core policy question that can help guide our application of section 102 — namely, whether the sort of information at issue is highly likely to be cheaper to consult through a search than recreate through independent invention. When one encounters a prior art reference that talks about solving the very problem on which you are focused, it is likely cheaper to find the solution in that reference’s file history than recreate it on your own.  (Even if the likelihood of finding cancelled pictures etc. in the file history is low, the cost of consulting the file history is also extremely low, at least compared to reinvention.) And this is so even if Judge Linn is right about whether the patent disclosure would prompt the ordinary artisan to look further on his or her own (without regard for our systemic concern about discouraging people for reinventing when search is cheaper).

So, I think Bruckelmyer is a reasonable decision on a challenging set of facts. And I think the majority’s stated reason (”Wyer is controlling”) is weak because it’s inaccurate.  Better to have brought the underlying policy matters out into the open.