The patented invention at issue in Jazz Pharms is not a drug or drug treatment, but rather to a “drug distribution system for tracking prescriptions” for drugs with a risk of abuse The PTAB found claims from all six patents to be invalid as obvious.
The core issue on appeal was whether a pre-filing disclosure by Jazz counted as a prior art “printed publication.”
Printed Publication: As the language suggests, a “printed publication” must be both “printed” and also a “publication.” These requirements though have been broadly construed. “Printed” publications go well beyond physical hard-copies to allow for various media – including video and online forms. To be a “publication,” the reference needs to be made sufficiently available to the public – publication. In the leading case of In re Hall,the Federal Circuit explained that accessibility to the relevant public is key – we ask “whether interested members of the relevant public could obtain the information if they wanted to.” Although the court has developed a number of guide posts, the question of sufficient availability is seen as a factual inquiry handled on a case-by-case basis.
The prior art here was developed as part of an FDA drug safety review for one of Jazz’s drug products that was known as a potential date-rape drug. In May 2001, the FDA announced in the Federal Register an upcoming public meeting – noting that the focus of the meeting would be on risk management for the drug. The notice included a hyperlink to the pin-cite that eventually included meeting information, including background material, minutes, transcripts, and slides.
With these facts, Jazz Pharms appears an easy case – the materials were freely available online and relevant members of the public were directed to the material via the official public source.
A few caveats here:
- The materials were not proven to be searchable or indexed at the time. In response, the court explained that these are not required elements of publication if sufficiently disseminated via other mechanisms.
- Jazz argued that folks of skill would not have seen the notice in the Federal Register and therefore not have been pointed to the underlying documents. In response, the Federal Circuit explained that a Federal Register notice might not always be sufficient to place the relevant public on notice of a publication, but that it was sufficient in this case since it was indexed and directed toward members of the public interested in systems to protect the public from potentially dangerous drugs. The court also endorsed the PTAB’s “sensible observation that the purpose of the Federal Register is to provide notice of government action such as the advisory committee meeting here.”
Note here that with publication, the touch stone is “accessibility” rather than “actual access.” The court has repeatedly explained that “[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 (Fed. Cir. 1988).