The Software IP Report

When Is a Document on the Internet a “Printed Publication?”

Addressing an issue with which patent litigators and prosecutors alike regularly grapple, the Federal Circuit recently held that a graduate student’s report, provided on her personal web page, was not a “printed publication” under 35 U.S.C. § 102(b) (pre-America Invents Act).  Blue Calypso, LLC. V. Groupon, Inc., Nos. 2015-1391, 2015-1393, 2015-1394 (Fed. Cir. March 1, 2016). This holding arose in the context of the Federal Circuit’s affirmance of the Patent Trial and Appeal Board’s decision to institute Covered Business Method (CBM) review of five patents owned by Blue Calypso, and its subsequent invalidation of patent claims under 35 U.S.C. § 102 (but not § 103), as well as the reversal of rejections under 35 U.S.C. § 112.

I suspect the issues of whether CBM review should have been instituted, and whether the five patents at issue were CBM patents, will attract plenty of commentary. However, in the midst of these weighty issues, the court’s discussion of what is a printed publication, and its holding in that regard, should not be overlooked.

Groupon’s expert had coauthored the report in question with his graduate student, now Dr. Ratsimor, who posted the report on her personal web page. Groupon argued to the PTAB that the Ratsimor report was a “printed publication” because it “was available via a hyperlink” on Dr. Ratsimor’s “personal webpage . . . before the critical date of the Blue Calypso Patents.” The PTAB disagreed, and held that the Ratsimor reference was not a “printed publication.”

The Federal Circuit agreed with the PTAB that the Ratsimor report did not qualify as a printed publication. Traditionally, “[t]he issue of public accessibility has frequently arisen in the context of references stored in libraries.” In that context, while not the sole way in which a library document can be held to be publicly accessible, “[i]indexing by subject offers meaningful assurance that an ordinarily skilled artisan, exercising reasonable diligence, will be able to locate a particular reference among the many volumes stored in a library.”

Although the issue of public accessibility of online documents has arisen more recently, indexing is equally important in that context, the Court explained. Here, the court agreed with the PTAB that “that Groupon had failed to carry its burden of establishing that an interested party exercising reasonable diligence would have located Ratsimor.” There was no evidence that the report “was viewed or downloaded,” or that “a person interested in e-commerce and peer-to-peer marketing would be independently aware of the web address for Dr. Ratsimor’s personal page.” Concerning Groupon’s argument that a search engine could have found the Ratsimor report, the court found the record to be “devoid of any evidence that a query of a search engine before the critical date, using any combination of search words, would have led to Ratsimor appearing in the search results.”

Groupon also argued that a published article by Dr. Ratsimor and certain of her co-authors “would have directed interested researchers to Ratsimor.” However, although related to the research discussed in the Ratsimor report, and publicly available, the published article included no citation to the Ratsimor report. Thus, the published article lacked an “adequate roadmap” to Ratsimor, or any reference to Dr. Ratsimor’s personal web page. A citation in the published article would have provided an adequate roadmap, the court added.