The Software IP Report

Usenet Post Qualifies as “Printed Publication” Prior Art

A post to an Internet newsgroup nine months before the priority date of U.S. Patent No. 6,081,835 qualified as a “printed publication” that could be used as invalidating prior art.  Suffolk Technologies, LLC v. AOL, Inc., No. 2013-1392 (Fed. Cir. May 27, 2014).  This holding was one of the bases on which the Federal Circuit upheld the district court’s grant of summary judgment in the defendant’s favor.

Following a claim construction, the district court had held that claims 1, 7, and 9 of the ’835 patent were anticipated by the Usenet post.  Suffolk, the patent owner, had further stipulated, prior to bringing this appeal, that claim 6 was anticipated in light of the district court’s claim constructions.

The Federal Circuit, in an opinion by Judge Prost, upheld the district court’s claim constructions, and then turned to the question of whether the Usenet post (the “Post”) was a printed publication, and if so, whether the Post was sufficiently reliable to be held to anticipate the ’835 patent claims.  Suffolk argued that the Post was not “printed publication” prior art because “the Post’s audience was not those of ordinary skill in the art and locating the Post would be too difficult.”

Suffolk’s first argument, that the Post’s audience did not include those of ordinary skill, was based in part on the Post’s author’s comment that he was a “newbie,” and his question might seem “ridiculous.”  However, the level of ordinary skill in the art of computer gateway interfaces (CGI) at the time was such that everybody was a beginner, and there were no experts.  Further, the record showed that those of ordinary skill were in fact using newsgroups.

Suffolk’s argument “that the Post was not sufficiently publically accessible to be considered a printed publication” was based on the facts “that the Post was non-indexed and non-searchable,” and that “although the newsgroup posts did have titles, they could only be sorted by date.”  The court was not persuaded by this argument, because the Post could in fact have been located much more easily than Suffolk suggested.  Usenet posts were organized in a hierarchical manner, and someone interested in CGI easily could have found it.

Moreover, “a printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.”  This case was analogous to cases where a paper was presented at an industry conference, or distributed individually to six people.  Here, “the Post elicited at least six responses over the week following its publication discussing the efficacy of Gundavaram’s proposal.”  The court also noted that “[m]any more people may have viewed the posts without posting anything themselves.”

The court also disagreed with Suffolk that “serious questions undermining the reliability and accuracy of the Gundavaram post should have been submitted to the jury.”  The Post had been authenticated by its author.  Moreover, Suffolk presented no evidence challenging its accuracy.  There was no genuine issue of material fact.

Another interesting aspect of this case involved Suffolk’s expert.  This expert had originally testified that he had no opinion concerning whether the Post anticipated claim 1.  He then attempted to submit an supplemental report stating that claim 1 was not anticipated.  The district court did not think that intervening claim construction warranted the expert’s change of views, and it was within the discretion of the district court to exclude the expert’s supplemental report.