In SRI International v Internet Security Systems Inc and Symantec Corp  (U.S. Federal Circuit) 2007-1065, a U.S. court held that a disclosure posted onto a computer server that is for all intents and purposes “secure” could still irrevocably destroy the novelty of a U.S. patent. This should be viewed as a warning to all would-be patentees interested in pursuing patent protection in the United States.
Early in 2008, the Federal Circuit handed down an important decision. Although not well publicised, the decision is nonetheless quite worrying in its potential scope for damaging a patentee’s chances of a valid patent in the United States.
The United States is one of the last remaining jurisdictions still permitting a so-called “grace period” of one year after the first publication of an invention in order for the patentee to file a patent application. If the patent application is filed after this year of grace then the grant of the patent will be barred owing to a lack of novelty. Under 35 USC Section 102(b) “a person shall be entitled to a patent unless…the invention was…described in a printed publication…more that one year prior to the date of the application for patent” (author’s emphasis). As is the case with many pieces of legislation, this legislation was enacted well before any of the technology advancements related to computers and the availability and ease of access of information through the internet.
SRI International, a U.S. based non profit research institute for government agencies, commercial businesses, foundations, and other organisations, was the owner of four U.S. patents related to cyber security and intrusion detection, specifically “a computer-automated method of hierarchical event monitoring and analysis within an enterprise network”. In layman’s terms these were patents for monitoring malicious or dangerous activity over large internet networks. These four patents all claim priority from an application filed on 9 November 1998.
The SRI inventors were a prolific bunch and authored numerous peer review papers prior to the filing of the priority patent application. In 1997, the inventors were preparing for an international symposium to take place in early 1998 and were required by the organisers of the conference to deposit the various papers they were going to present, via email, no later than 1 August 1997. They duly created a backup copy of the papers on the SRI server. These papers were in fact the precursor to the priority patent application filed in November 1998. The SRI server therefore contained a backup copy of the papers more than one year before the priority filing date. However, even though this server was publicly available, copies of the papers were only accessible to those who were given the full FTP address. FTP stands for “File Transfer Protocol” and is claimed to be the most secure way to exchange files over the internet. As a result, the most common use for FTP addresses is to download files from the internet. Because of this, FTP is the backbone of MP3 music dowloading and vital to most online auction and game enthusiasts. In addition, the ability to transfer files back and forth makes FTP essential for anyone creating a web page.
FAST FORWARD 10 YEARS…
SRI was granted its U.S. patents and sued Internet Security Systems Inc (ISS) and Symantec Corp for patent infringement. ISS and Symantec defended their actions by arguing that the SRI patents were invalid under the printed publication bar of Section 102(b) in view of the papers on the SRI server. The Federal district court granted the Defendants’ motion for summary judgment that the patent claims lacked novelty in light of a document called Live Traffic Analysis of TCP/IP Gateways. This case was then appealed to the Court of Appeal for the Federal Circuit—the main court of appeal for intellectual property matter in the United States.
Over the years, the Federal Circuit has issued advice and numerous decisions regarding what should be included in the assessment of novelty under Section 102. One of the leading cases, Brukelmyer v Ground Heaters Inc.  02-CV-1761 (D. Minn.), held that “a given reference is publicly accessible upon a satisfactory showing that such a document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it” (author’s emphasis).
The Court of Appeal was therefore faced with determining how the public accessibility standard would apply to a publication that was posted on a publicly available internet server, but not indexed other than by its file name.
There was also precedent, however, concerning a graduate student’s thesis that had not been catalogued or placed on the library shelves being held not “publicly accessible” because a search would not have produced the thesis document even if the search had been performed by someone who knew of its existence. Similarly, a graduate thesis that had been listed only by the author’s name in an alphabetical index was also not publicly accessible since the author’s name bore no relationship to the subject matter of the thesis. If, however, a paper or a foreign patent application was properly classified, indexed and/or abstracted this would be considered by the courts and the U.S. Patent Office as being “publicly accessible”, as thepurpose of such postings was to communicate the relevant information to the interested public.
For SRI, the saving grace was that even though the SRI paper placed on the publicly available server was essentially available to any person with FTP know-how and knowledge of the subdirectory containing the paper, this posting was not publicised or “made available to persons interested the subject matter”. The paper was in fact not indexed or catalogued and was only available to a few persons provided with the full path and file name of the paper. The Court held that this “publication” was not intended for dissemination to the public and that the posting was “more non-accessible than accessible” and held that without further facts about accessibility the posting of the relevant paper did not constitute a printed publication bar under Section 102(b).
One of the judges dissented from the majority’s holding relating to the SRI paper. In this regard, Judge Moore would have held that the Defendants presented sufficient evidence demonstrating that the SRI paper was posted on the internet on a public FTP server, by his calculations for seven days. It was therefore, in his view available to anyone prior to the critical date. In contrast, SRI failed to introduce any evidence showing a genuine issue of material fact as to the public accessibility of the SRI paper. While SRI presented attorney argument in this respect, Judge Moore did not believe this was sufficient to fill the void caused by the lack of evidence. For SRI, thankfully, Judge Moore was in the minority and as a result the patents still had their novelty intact.
For SRI clearly this case had a happy ending, but if the server had somehow been structured in such a way that an easy search of the subject matter was possible, the outcome would have undoubtedly been different. The take home message is that it is ALWAYS best to file an application before any dissemination of information regarding an invention may potentially find its way into the public domain. Clearly the inventor’s paper would have destroyed any hopes of patent protection in the United Kingdom and/or Europe, but those inventors who feel it is imperative “to publish or perish” (a category which all too often includes individuals in academia or employed by research facilities) should be aware of where and how documents are to be stored and indexed.