When much of the early case law related to printed publications was developed, courts could not have anticipated the prevalence of the Internet and its impact on the dissemination of information. Many of the legal concepts developed in the early case law, however, can be applied to publications on the Internet.
This is the eighth post in our series examining what constitutes a “printed publication.” Our first post provided an introduction and summary of the statutory basis for printed publications under 35 U.S.C. § 102; our second post examined whether patents and published patent applications can be printed publications; our third post discussed whether theses, dissertations, and other references in a library can be printed publications; our fourth post investigated under what circumstances presentations at scientific conferences can be printed publications; our fifth post considered whether technical papers, government reports, and related documents can be printed publications; our sixth post examined whether sales catalogs and technical brochures can be printed publications; and our seventh post discussed whether grant proposals and submissions to regulatory agencies can be printed publications. These posts can be viewed here: What Constitutes a Printed Publication – Introduction and Statutory Basis – Part 1; What Constitutes a Printed Publication – Patents and Published Patent Applications – Part 2; What Constitutes a Printed Publication – Theses, Dissertations, and other References in a Library – Part 3; What Constitutes a Printed Publication – Presentations at Scientific Conferences – Part 4; What Constitutes a Printed Publication – Technical Reports, Government Reports, and Related Documents – Part 5; What Constitutes a Printed Publication – Sales Catalogs and Technical Brochures – Part 6; and What Constitutes a Printed Publication – Grant Proposals and Submissions to Regulatory Agencies – Part 7
In SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed. Cir. 2008), the reference was a paper stored on a company’s internal server more than one year before the critical date of the patent in dispute. Id. at 1190. The paper was incorporated by reference and cited in an IDS in each of the patents in dispute. Id. The paper, however, was submitted to a symposium chair and backed up on the company’s server more than one year before the critical date. Id. The inventor directed members of the scientific community to a specific server link in regard to other papers, e.g., by full path and filename, but not to the specific reference in question. Id. at 1191.
The court in this case did not find enough evidence in the record to show that the paper was publicly accessible and thus a printed publication under 35 U.S.C § 102(b). Id. at 1195. More particularly, the court found that the paper was not catalogued or indexed in a meaningful way and not intended for dissemination to the public. Id. at 1197 (noting that the server did not contain an index or catalogue or other tools for customary and meaningful research). Thus, the court vacated the district court’s finding and remanded the case for further proceedings because of genuine issues of fact about the public accessibility of the paper. Id.
In Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374 (Fed. Cir. 2012), the reference was an article that was available only through an on-line publication. The CAFC concluded that the article was publicly accessible based on unrebutted testimony in the record indicating that the particular on-line publication was: (1) well known to the community interested in the relevant subject matter and contained more than 100 articles relating to subject matter; (2) all submissions for publication in the on-line publication are treated by the community as public disclosures; and (3) users can freely and easily copy content from the on-line publication. Id. at 1380-81. Further, the on-line publication also included a search tool that would have retrieved the article in response to relevant search terms. Id. at 1381.
Although the record was devoid of evidence indicating whether or not the website had been indexed by commercial search engines as of the critical date, the CAFC determined that a person of ordinary skill interested in the relevant subject matter would have been independently aware of the on-line publication as a prominent forum for discussing such subject matter and, upon accessing the website, such an interested researcher would have found the article using that website’s own search functions and applying reasonable diligence. Thus, the other factors referenced hereinabove overcame the absence of evidence demonstrating that the website was indexed and thereby findable by an internet search engine. Id. at 1381 (acknowledging that just as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, indexing, “[w]hether . . . through search engines or otherwise,” also is an important question for determining if a reference stored on a given webpage in cyberspace is publicly accessible). In spite of the lack of evidence regarding indexing, the CAFC concluded in Voter Verified that the online article qualified as a prior art “printed publication” under § 102(b). Id.
In Suffolk Technologies, LLC v. AOL Inc., 752 F.3d 1358 (Fed. Cir. 2014), the reference was a post to an internet newsgroup related to the relevant subject matter. The CAFC held that the post was a printed publication under § 102, finding that the newsgroup included those of ordinary skill in the art at the time of the post and that the post was sufficiently disseminated. Id. at 1364-65 (distinguishing the facts of this case over those of SRI International). The court went on to state that a printed publication “need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.” Id. at 1365 (concluding that an electronic newsgroup post was sufficiently disseminated where the newsgroup was populated by those of ordinary skill in the art and “dialogue with the intended audience was the entire purpose of the newsgroup postings,” even though the post was non-indexed and non-searchable).
In Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016), the reference was a report authored by a graduate student who made the report available via a hyperlink on her personal webpage that she maintained while a student. Id. at 1348 (noting that the author of the report was a graduate student of Groupon’s expert). In this case, no evidence presented at trial established that the report was disseminated to the interested public before the critical date. Id. at 1349 (noting that no evidence was presented that the report was viewed or downloaded). In contrast to Voter Verified, the CAFC noted that this case lacked any evidence that a person interested in the relevant subject matter would be independently aware of the web address for the student’s personal webpage. Id. The court reasoned that although an internet search engine could have been able to locate the report, the record was devoid of any evidence that a query of a search engine using any combination of search terms would have led to the student’s webpage. Id. at 1350 (noting that the court cannot automatically infer that the webpage was indexed).
The court also considered whether a published article that the student co-authored would have directed interested researchers to the student’s webpage. The court has previously found that such “research aids” can establish public accessibility. See Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1379 (Fed. Cir.2006) (concluding that the presence of an issued foreign patent put an interested researcher on notice of that patent’s application). In this case, although the published article was publicly accessible and that it related to the same research presented in the report, the published article did not include any citation to the report. Thus, the court concluded that the published article did not provide a skilled artisan with a sufficiently definite roadmap leading to report. Blue Calypso, 815 F.3d at 1350 (noting that “[a]n adequate roadmap need not give turn-by-turn directions, but should at least provide enough details from which we can determine that an interested party is reasonably certain to arrive at the destination: the potentially invalidating reference”). The court noted that issued foreign patent in Bruckelmyer provided such a roadmap. Id.
The court further noted that “a published article with an express citation to the potentially invalidating reference would similarly provide the necessary guidance.” Id.; see also Cornell Univ. v. Hewlett-Packard Co., No. 01-cv-1974, 2008 U.S. Dist. LEXIS 39343, at *20-21 (N.D.N.Y. May 14, 2008) (finding that an article in a “seminal publication in the field of electrical engineering” with an explicit citation to the allegedly invalidating reference was a research aid that made the sought-after reference publicly accessible). In this case, there was no evidence that the published article cited or mentioned the student’s personal webpage. Accordingly, the court concluded that the report was not a printed publication within the meaning of 35 U.S.C. § 102(b). Blue Calypso, 815 F.3d at 1351.
In Servicenow, Inc. v. Hewlett-Packard Co., IPR2015-00707, Paper No. 12 (PTAB Aug. 26, 2015), the reference was a collection of e-documents downloaded from the company’s website. Id. at p. 2. In the case, the e-documents did not qualify as printed publications. In particular, the Board noted that evidence drawn from the Wayback Machine service was not sufficient to show a reasonable likelihood that the e-documents were printed publications that were prior art to patent in question. Id. at p. 15.
In Crestron Electronics, Inc., v. Intuitive Building Controls, Inc., IPR2015-01460, Paper No. 14 (Jan. 14, 2016), the reference was a collection of printouts of archived web pages together with an affidavit attesting to processes (e.g., the Wayback Machine) used to archive web pages and how they are dated. Id. at p. 12. The Board found that the archived web pages qualified as printed publications under 35 U.S.C. § 102(b) and were publicly accessible to interested persons at least one year prior to the filing of the patent in question. Id. at pp. 12-15. In reaching this decision, the Board relied on evidence that indicated that the portion of the archived web pages relied on were archived on the same date and were published at least one year prior to the critical date. Id. at 13. Further, the Board determined that the archived web pages were locatable by crawlers of the Wayback Machine and would have been locatable to interested persons using typical search engines available at least one year before the critical date. Id. at 14-16 (noting that documents generated by the Wayback Machine have been accepted generally as evidence of prior art in the patent context).
In Laird Tech. Inc., v. A.K. Stamping Co. Inc., IPR2017-02038, Paper No. 6 (PTAB Mar. 14, 2018), the reference was a corporate white paper dated more than one year prior to the critical date. Id. at p. 5. The Board concluded that the corporate white paper did not qualify as a “printed publication” Id. at p. 17. In reaching this decision, the Board noted that the date of the cover page of the document was a hearsay statement, which, without further evidence, does not establish when the document became publicly available. Id. at 10 (further noting that a copyright statement appearing on the document without further evidence also does not serve to establish when the document became publicly available). Further, the Board found no evidence that the document was catalogued or indexed in a meaningful way, id. at p. 11, and that the company website by itself did not provide evidence of public accessibility. Id. at 12. Finally, the Board found that the use of the Wayback Machine to determine the publication date of company blog did not indicate the publication date of the specific white paper reference in question. Id. at 15-17.
Even though the Internet was not contemplated when much of the early case law was developed, many of the concepts articulated in those early cases can be applied to publications on the Internet. For example, whether the document was catalogued or indexed in a meaningful way is a factor for determining whether a document constitutes a printed publications. Likewise, whether search tools used for customary and meaningful research would have retrieved the document and whether one of ordinary skill in the art applying reasonable diligence could have found the document also are factors. Further, the existence of a research aid or roadmap as articulated in Bruckelmyer can be a factor. Finally, in what is somewhat unique to documents on the Internet, use of the Wayback machine is not always sufficient to show that such documents constitute printed publications, although in some cases it is.
Our next post in this series will provide a summary and practice tips: What Constitutes a Printed Publication – Summary and Practice Tips – Part 9