The Software IP Report

Unindexed Internet Content Can Be a “Printed Publication” under 35 U.S.C. § 102(b)

Unindexed Internet content can be a “printed publication” under 35 U.S.C. § 102(b), the Federal Circuit has held.  Voter Verified, Inc. v. Premier Election Solutions, Inc., Nos. 2011-1553, 2012-1017, 2011-1559, 2012-1016 (Fed. Cir. Nov. 5, 2012).

Claim 49 of U.S. Reissue Patent RE40,449 recited “[a] method of voting providing for self-verification of a ballot.” The District Court had held claim 49 invalid under 35 U.S.C. § 103 based on an article from the “Risks Digest,” an “online periodical concerned with computer safety and security.”  The article had not been indexed by any search engine prior to the critical date, but one of ordinary skill indisputably could have found the article by using a search interface provided by the Risks Digest.

The patent owner contended “that a web-based reference” such as the article in question “must be searchable by pertinent terms over the internet to qualify as a prior art printed publication as defined by 35 U.S.C. § 102(b).”  The defendants responded that the article qualified “as prior art because it was posted on a public website well known to those interested in the art of voting technologies—the Risks Digest—and could be retrieved from that website by searching based on subject matter.”

The Court agreed with the defendants.  The “key inquiry” in determining whether the article was a “printed publication” was “whether the reference was made ‘sufficiently accessible to the public interested in the art’ before the critical date.” (Citations omitted.)  This inquiry is fact-specific and is performed on a case-by-case basis. Indexing of the article was merely one factor, and not a prerequisite, for a finding that the article was a “printed publication.”  Other factors weighed in favor of such a finding.

Specifically, the Risks Digest online publication was well known to those skilled in the art.  Articles submitted to the Risks Digest were treated by the computer automation community as public disclosures.  Even though the record did not show that the article in question had been indexed by Internet search engines, the record did show that the Risks Digest “included a search tool that would have retrieved the . . . article in response to search terms such as vote, voting, ballot, and/or election.”  Thus, one of ordinary skill in the art would have been aware of Risks Digest, and would have been able to find the article by applying reasonable diligence.  Therefore, it “was publicly available by the critical date and therefore qualifies as a prior art printed publication under § 102(b).”

The Federal Circuit further agreed with the District Court that the prior art article rendered claim 49 invalid.

This case included several other interesting holdings.  One of these – that certain claims could not be directly infringed because no one party carried them out – I will discuss in a subsequent post.  In addition, Federal Circuit held that certain claims could not be infringed because the plaintiff’s infringement argument depended on recited means being a human being.  However, “It is well established that a human being cannot constitute a ‘means’ within the scope of § 112, ¶ 6.”

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