SRI International, Inc. v. Symantec Corp.

(Fed. Cir. 2008)

Although posted on a public file transfer protocol (FTP) site, a prior printed publication that is not indexed or cataloged in any meaningful way is not prior art under 35 U.S.C. § 102(b), according to the Federal Circuit.

SRI International owns four patents that each originate from a patent application filed on November 9, 1998. On August 1, 1997, a paper that disclosed each of the claimed inventions was e-mailed to a conference chair. In addition, the paper was posted on a publicly accessible FTP site as a backup for the conference chair. The paper remained on the FTP site for several days.

35 U.S.C § 102(b) provides that: “[a] person shall be entitled to a patent unless . . . the invention was patented or described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for the patent in the United States.” (Emphasis added.) This statutory bar is grounded on the principle that, once an invention is in the public domain, it is no longer patentable by anyone.

The Court stated that because there are many ways in which a reference may be disseminated to the interested public, “public accessibility” has been called the touchstone in determining whether a reference constitutes a “printed publication” under 35 U.S.C. § 102(b). The Court stated that a reference is “publicly accessible” upon a satisfactory showing that the reference has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter can locate it using reasonable diligence.

The Court found that although the FTP site was publicly accessible and the inventor provided the location of the FTP site to others skilled in the art, there was insufficient evidence to show that the paper was publicly accessible and thus a printed publication under 35 U.S.C. § 102(b). The Court stated that because the paper was not indexed or cataloged, it would have been difficult for the public to find and therefore is not a printed publication under 35 U.S.C. § 102(b).

Practice Tip: Although the Federal Circuit found that a paper not indexed on a publicly accessible FTP site is not a printed publication under 35 U.S.C. § 102(b), it is recommended to fi le an application with the Patent Offi ce prior to disclosing information regarding an invention.