Sunday, January 13, 2008

CAFC: Unindexed Document on FTP Server Questioned as Publicly-Accessable Prior Art

SRI International v. Internet Security Systems, Inc. (2007-1065) January 8, 2008

Prior to filing its patent application, SRI posted a document on an FTP server pursuant to ongoing research. The document contained subject matter that overlapped the filed application. Just over one year prior to filing, SRI emailed certain individuals involved in the research, and informed them of the document, providing the path and filename of the document.

After the patent issued, SRI sued a number of defendants for infringement. The defendants argued that the patent was invalid under 102(b), due to the posting and directing of individuals to the FTP document. The lower court agreed and granted summary judgment on invalidity.

On appeal, SRI argued that the FTP document was not a "printed publication" and also argued that the document was not enabling as a 102 reference. On the enablement argument, the CAFC disagreed with SRI:

Both the '212 patent specification and the EMERALD 1997 paper contain similar sections explaining statistical detection . . . Furthermore, the identical figures are a graphical depiction of a network monitor to scrutinize an event stream and a diagram of a resource object that configures the network monitor. These figures show an architecture for network monitoring based on a profile engine and configurable event structures sufficient to enable one skilled in the art.

Indeed, these disclosures helped the inventors obtain issuance of the '212 patent. The issuance itself shows that the specification satisfied the enablement requirements of 35 U.S.C. § 112, ¶ 1. With the 1997 paper providing similar, or even a partially identical, disclosure to the '212 patent specification, the record meets the lower enablement standard for prior art under 35 U.S.C. § 102(b). Thus, the 1997 publication with its similarities in technical scope and description to the specification of the '212 patent meets the enabling hurdle for a prior art reference.
Regarding the FTP document being a "printed publication", the CAFC held that there was insufficient evidence showing that the document was "publicly accessible":
The record on summary judgment does not show that an anonymous user skilled in the art in 1997 would have gained access to the FTP server and would have freely navigated through the directory structure to find the Live Traffic paper. To the contrary, the paper’s author, Mr. Porras, thought it necessary to provide Dr. Bishop with the full FTP address for the file. Surely Dr. Bishop, the Program Chair for SNDSS, would have qualified as one of ordinary skill in the art in 1997. Yet, despite his knowledge of the field, FTP servers, and the paper, Dr. Bishop apparently would not have found the reference without Mr. Porras's precise directions. It is doubtful that anyone outside the review committee looking for papers submitted to the Internet Society’s Symposium would search a subfolder of an SRI FTP server. These are separate entities. It is also doubtful that anyone outside the review committee would have been aware of the paper or looked for it at all in early August 1997. These facts seem to militate against a finding of public accessibility. At least they warrant examination upon remand.

Judge Moore (dissenting-in-part):
This case is quite unlike the uncatalogued, unshelved thesis in a general university library in Application of Bayer, 568 F.2d 1357 (CCPA 1978). In this case, the Live Traffic paper existed on an FTP server that was used for cyber security work, in a subdirectory named for a specific, well-known cyber security project (EMERALD). As the district court pointed out, it is ironic that SRI, which is in the intrusion detection business, argues that those skilled in the art of intrusion detection could not detect information purposefully posted on the internet by a member of the cyber security community.
* * *
SRI does not contend that papers on an FTP server are difficult for a user to copy or print. It is undisputed that at the touch of a button, the entire Live Traffic paper could be downloaded or printed. Copying could not be simpler. Unlike Klopfenstein, where members of the public would have to quickly transcribe the text or graphics of the poster during a conference, members of the public could download or print the Live Traffic paper immediately upon accessing the paper, and at any time of the day or night during the seven days it was posted on the FTP server.

Whether the case is analyzed under the rubric of the library thesis cases or the temporary dissemination cases, the result is the same. The defendants carried their burden under Rule 56(c). Because SRI presented no evidence showing genuine issues of material fact for trial, I would affirm the district court’s ruling of invalidity based on the Live Traffic paper.

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