Reiterating its precedent, the U.S. Court of Appeals for the Federal Circuit held that determining whether a reference constitutes a printed publication—therefore qualifying as prior art—is a fact -intensive inquiry approached on a case-by-case basis. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., Case No. 07-1065 (Fed. Cir., Jan. 8, 2008) (Rader J.; Moore J. dissenting-in-part).
The technology in this case related to cyber-security. SRI asserted four patents, all of which originated from a single application. Each of the patents incorporated by reference a paper authored by the inventors called the “Live Traffic” paper. This paper, among others, was related to SRI’s publicized EMERALD project. More than one year before the filing date of the application that led to the asserted patents, one of the inventors posted the Live Traffic paper on SRI’s FTP server in a subdirectory along with other papers related to EMERALD. FTP is a protocol for exchanging files over computer networks such as the internet.
The Court held that posting the Live Traffic paper on the FTP server did not render it publicly accessible and, therefore, the paper did not constitute a printed publication. The Court reiterated that “public accessibility” is the “touchstone” in determining whether a reference constitutes a “printed publication” and that the determination is made on a case-by-case basis. According to the Court, the facts of this case pointed away from public accessibility. Specifically, the Court stated that the FTP server did not provide an index or catalogue or any way to meaningfully search for the Live Traffic paper. Furthermore, the record did not show that an anonymous user skilled in the art would have gained access to the FTP server and would have found the Live Traffic paper. Additionally, the record did not show that anyone accessed the paper via the FTP server during the time it was posted.
According to the Court, the record did show, however, seven instances in which one of the inventors previously directed people to the subdirectory containing papers related to the EMERALD project. The Court pointed out that, in every instance, the inventor directed people to a specific paper, which included in its filename the term “emerald” (i.e., the name of the publicized project). There was no specific direction with respect to the Live Traffic paper, which had a relatively obscure filename that did not include the term “emerald.” The Court, in finding against public accessibility, analogized posting of the Live Traffic paper on the FTP server to a poster at an unpublicized conference without a conference index of the location of the various poster presentations. In other words, the paper was not publicized or placed in front of the interested public and therefore could not constitute a printed publication.