Provisur Technologies, Inc. v. Weber, Inc.

Pursuant to 35 U.S.C. § 311(b), a petition for inter partes review (“IPR”) may challenge claims “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1373 (Fed. Cir. 2022). References that constitute prior art because they were in “public use” or “on sale” before the priority date of the challenged claims, 35 U.S.C. § 102(a), were “explicitly excluded” from the grounds that can be raised in IPR. Qualcomm Inc., 24 F.4th at 1376. The questions presented by the decision below are: I. Did the Federal Circuit err by holding that a product manual distributed with an onsale product necessarily constitutes a printed publication that can be asserted in an IPR, notwithstanding other considerations such as limited distribution, prohibitively high cost, confidentiality restrictions, and industry practice and expectations? II. Was the Federal Circuit’s determination that a product manual constitutes a printed publication because it was distributed with an on-sale product consistent with 35 U.S.C. § 311(b), which expressly excludes “on sale” prior art from grounds that may be asserted in inter partes review?