The Software IP Report

When Is a Document Publicly Available (and Therefore Prior Art)?

A document can qualify as “prior art” under 35 U.S.C. § 102 even when the document is what one might charitably describe as barely publicly available, and even when the document is incomplete. In re Enhanced Security Research LLC, No. 2013-1114 (Fed. Cir. Jan 13, 2014).  In this case, a divided Federal Circuit panel upheld an obviousness determination by the Patent Trial and Appeal Board (PTAB) that the combination of an incomplete product manual and a published academic article rendered a claimed invention obvious in the context of an ex parte re-examination proceeding.  The majority, in an opinion authored by Judge Dyk, found that the product manual was sufficient even if incomplete, and qualified as “publicly available” based on a declaration stating that a purchaser of a software product could have requested the manual.  Judge O’Malley dissented.

The claims of United States Patent No. 6,119,236, as amended during re-examination, were directed to “a computer security device and method for preventing unauthorized individuals from gaining access to a local computer network.”  A manual for a software product called NetStalker disclosed all claim elements except “the automatic assignment of different weights to different types of attempted security breaches.”  The PTAB and the Federal Circuit determined that a secondary reference compensated for this deficiency.  Further, the patent owner had waived its right to argue for the patentability of separate dependent claims on appeal where it had simply, before the PTAB, only conclusorily stated that these claims were patentable over the references.

The real interest in this case lies in the determination that the NetStalker manual qualified as prior art.  The manual’s title page dated as of May 1996.  NetStalker’s CEO filed a declaration stating that “[m]embers of the public showing an interest in buying or licensing the NetStalker product could have obtained a copy of the manual by contacting Haystack or Network Systems Corporation and requesting one.”  The CEO further averred that “[t]he NetStalker product was sold to or installed for approximately a dozen customers.”  The panel majority found that the manual qualified as “publicly-available prior art under § 102(a)(1)” based on “the Manual’s inscription date, the [CEO’s]Declaration, and evidence of NetStalker advertisements published in 1995.”

Because the manual was missing pages, the patent owner argued that it should not have been considered under Panduit Corp. v. Dennison Manufacturing Co., a 1987 case in which the Federal Circuit stated that prior art “must be considered in its entirety, i.e., as a whole, including portions that would lead away from the invention in suit.”  Judge Dyk, distinguished Panduit, stating that the court there explained “that § 103 does not permit a court to stitch together an obviousness finding from discrete portions of prior art references without considering the references as a whole.”  It is acceptable to consider a partial document “so long as the missing portions are not necessary to fully understand the submitted portions.”  There was nothing in the record here to indicate that the missing portions were necessary, or contradicted or undermined the finding of obviousness.

Judge O’Malley dissented.  In her view, the NetStalker manual was “facially incomplete,” and a finding that the manual “was publicly available as of the critical date” was “[un]supported by substantial evidence.”

Judge O’Malley noted that the NetStalker manual was submitted to the PTO by a party opposing the patent owner in litigation, and the afore-mentioned declaration was submitted by that party’s paid expert.  The declaration did not explain “why the reference was submitted in its incomplete state, or . . . what the missing portions discussed.”  Review of missing pages would have been necessary to determine whether the reference taught away from the claimed invention, or revealed that NetStalker was “actually less similar to the claimed invention that might appear.”  Moreover, Judge O’Malley disagreed that Panduit was distinguishable.

Further, the CEO’s declaration “was telling more for what it failed to state than for what little it actually did say with regard to accessibility.”  In particular, the declaration did not state that the version of NetStalker software available in May 1996 was the version described in the manual, nor did the declaration say that that version was “what was advertised in 1995,” much less that “the version described in the manual was ever described to the public.”  Even if the manual could have been available to the public, “there is no indication that the public had any information available to it which would have prompted anyone to make such a request for that particular manual.”

Finally, Judge O’Malley objected that the majority had based its finding of obviousness on grounds different than those used by the PTAB.  The PTAB had identified no reason to combine the references.  In apparent recognition of “these gaps in the Board’s analysis, the majority accepts the government’s suggestion that it fill them with an alternative analysis.”  The majority thus both violated principles of administrative agency review, and made an obviousness determination that, in Judge O’Malley’s view, was inconsistent with its own analysis.

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