Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2015-01078,
A. Lemley, Durie Tangri LLP, San Francisco, CA, argued for
represented by Adam R. Brausa; Karineh Khachatourian, Duane
Morris LLP, Palo Alto, CA.
Michael Schoenhard, McDermott, Will & Emery LLP,
Washington, DC, argued for appellee.
represented by Ian Barnett Brooks, Nicole Jantzi.
Reyna, Wallach, and Hughes, Circuit Judges.
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 challenged
claims are unpatentable as obvious. The Board based this
decision on its finding that a certain GoPro catalog is not a
prior art printed publication. We disagree. We vacate and
remand for further proceedings consistent with this opinion.
'954 patent and '694 patent
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. '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. 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 communication 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.
the '954 and '694 patents claim priority to a
provisional application filed on September 13, 2010. Thus,
the one-year critical date is September 13, 2009.
Proceedings Before the Board
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 Catalog") as prior art in each petition. The GoPro
Catalog discloses a digital camera linked to a wireless
viewfinder/controller that allows for a user preview ...