The Sound of One Patent Clapping

SRI Int’l v. Internet Security Systems

In SRI Int'l v. Internet Security Systems, the district court heard what it needed to grant summary judgment of invalidity.  The district court found that a paper that had been published more than a year prior to the patent application invalidated the patents under review.  The Federal Circuit didn't chime in. Why? Because in this electronic world what is "publicly accessible" has taken on new and different aspects from our previous hardcopy days.

The patents at issue involve technology for cyber security and network intrusion detection. Patent holder SRI actively participated in work-shops involving peer review and posted two papers describing details of its inventions to a FTP server more than a year prior to filing its patent application. When SRI brought suit against Internet Security Systems ("ISS"), ISS used the papers as the basis of an invalidity counter claim. ISS argued, and the district court agreed, that each of the two papers were anticipatory prior art which rendered SRI's patents invalid.

However, the Federal Circuit found questions of fact regarding the publication of one of the papers-known as the "Live Traffic" paper. Specifically, the question became whether posting the Live Traffic paper to the FTP site met the "public accessibility" requirement under §102 (b). The Federal Circuit noted that public accessibility is determined on a case by case basis. Here, there was no index or catalog to the directory on the FTP site where the paper was located. The court felt that nothing in the file placement or name used to describe the paper would have allowed one skilled in the art to navigate through the directory structure to the specific paper in question and cited the fact that the inventor provided the conference chair with the full FTP address in order for him to access it. Second, the only person outside SRI who knew of the existence of the paper on the FTP server was the conference chair-a fact confirmed by evidence that no one actually accessed the paper during the seven days it was posted to the site.

In the Federal Circuit's view, these facts were equivalent to putting up posters at a conference which no one advertises and to which no one goes. Vacating the grant of summary judgment, the Federal Circuit remanded the case with instructions to the district court to conduct a more thorough determination of the factual questions regarding public accessibility of the Live Traffic paper based on additional evidence and the Court's opinion.

Judge Moore, dissenting, strongly disagreed. Judge Moore cited evidence that the inventor had directed people to other locations on the FTP site at least seven times and that the site had been referenced by relevant Google user groups more than 70 times. Asserting that the community of interest would have no difficulty navigating through the FTP site's hierarchies, she concluded that the posting of the Live Traffic to the FTP site was the equivalent of placing a book with an obscure title on the shelf of library with a specific subject matter. Because of the internet, Judge Moore said, anyone, anywhere, could access, download and/or print a copy of the paper during the seven days the paper remained on the site. Enough, according to the dissent, for publication to have occurred.

SRI illustrates how new methodologies of information dissemination continue to impact inventions and patentability-particularly in emerging industries. Leading edge innovators must balance the credibility (and funding) that often ensues from peer review and approval with the very real risk that disclosures made during that process can impact patent validity. Inventors on the road to a patent application will want to heed the warning inherent in the SRI decision-pay attention to both the timing and methods by which key invention information is transmitted or risk future challenges to patent validity. On the other hand, those facing infringement claims may wish to broaden the scope of their discovery inquiries in order to assess whether a valid patent actually exists by asking to whom, when and just how inventors communicated key invention information.

With ever-emerging mediums by which information can be transmitted, shared and reviewed, we predict disputes regarding public accessibility to continue. After SRI we wonder if emerging technology publications will be like trees falling in the forest -  impacting a patent's validity only if someone is there to see them.

The articles on our Website include some of the publications and papers authored by our attorneys, both before and after they joined our firm. The content of these articles should not be taken as legal advice.