Judges: Mayer, Rader (author), Moore (dissenting-in-part)

[Appealed from D. Del., Judge Robinson]

In SRI International, Inc. v. Internet Security Systems, Inc., No. 07-1065 (Fed. Cir. Jan. 8, 2008), the Federal Circuit affirmed the district court’s grant of SJ of invalidity under 35 U.S.C. § 102(b) with respect to a first article, finding that the article was enabling. The Court, however, vacated and remanded the district court’s grant of SJ of invalidity with respect to a second article, finding that genuine issues of material fact existed about the public accessibility of that article.

SRI International, Inc. (“SRI”) owns U.S. Patent Nos. 6,484,203 (“the ’203 patent”), 6,708,212 (“the ’212 patent”), 6,321,338 (“the ’338 patent”), and 6,711,615 (“the ’615 patent”). All four patents relate to cyber security and intrusion detection, and originated from a November 1998 application by inventors Phillip Porras and Alfonso Valdes.

SRI sued Internet Security Systems, Inc. (a Delaware corporation), Internet Security Systems, Inc. (a Georgia corporation), and Symantec Corporation (collectively “Defendants”) for infringement of the ’203, ’212, ’338, and ’615 patents. Defendants moved for SJ, arguing that all four patents were invalid under 35 U.S.C. § 102(b). Specifically, Defendants argued that all four patents were invalid as anticipated by SRI’s paper entitled “Live Traffic Analysis of TCP/IP Analysis of TCP/IP Gateways” (“Live Traffic paper”) and that the ’212 patent was additionally invalid as anticipated by SRI’s paper entitled “EMERALD: Event Monitoring Enabling Responses to Anomalous Live Disturbances” (“EMERALD paper”). SRI countered with a motion for partial SJ that the Live Traffic paper did not qualify as a printed publication under § 102(b) and that the EMERALD paper was not enabling and, thus, did not anticipate. The district court granted SJ to Defendants, finding that the Live Traffic paper was a printed publication that anticipated all asserted claims of the four patents-in-suit and that the EMERALD paper was enabling and anticipated the ’212 patent. SRI appealed.

On appeal, the Federal Circuit first addressed the district court’s grant of SJ with respect to the EMERALD paper. SRI asserted that the EMERALD paper could not anticipate because it did not provide an enabling disclosure of the claimed invention. The Federal Circuit disagreed. The Court explained that the standard for enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard under section 112. It observed that “[s]ignificantly, . . . anticipation does not require actual performance of suggestions in a disclosure. Rather, anticipation only requires that those suggestions be enabled to one skilled in the art.” Slip op. at 9 (citations and internal quotation marks omitted).

Applying these principles, the Court noted that the ’212 patent and the EMERALD paper included similar sections explaining statistical detection and identical figures. It reasoned that these disclosures helped the inventors obtain issuance of the ’212 patent and that the issuance itself showed that the specification satisfied the enablement requirement under 35 U.S.C. § 112, ¶ 1. Thus, the Court concluded that the 1997 EMERALD paper with its similarities in technical scope and description to the specification of the ’212 patent met the enablement hurdle. In so concluding, the Court rejected the testimony of SRI’s expert, finding that his testimony contained only generalized conclusions and was not sufficient to overcome the weight of evidence that the EMERALD paper offered an enabling disclosure. Accordingly, the Court affirmed the district court’s grant of SJ of invalidity with respect to the EMERALD paper.

The Federal Circuit then turned to the district court’s grant of SJ with respect to the Live Traffic paper. It noted that it must determine its accessibility to the public before the critical date. If the Live Traffic paper qualified as prior art, the parties had agreed that its disclosure rendered all four patents-in-suit invalid. The district court found that the Live Traffic paper was available on a publicly accessible file transfer protocol (“FTP”) site and that the inventor, Mr. Porras, provided the address to the FTP site to other members of the intrusion detection community both in presentations and via e-mail. The district court thus determined that the FTP site gave access to the article to a person of ordinary skill in the art. The Federal Circuit disagreed, finding that there was insufficient evidence to show public accessibility as a printed publication under § 102(b).

The Federal Circuit explained that “[a] given reference is ‘publicly accessible’ upon a satisfactory showing that such 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.” Id. at 14 (citation omitted). It noted that its case law has discussed public accessibility in one line of cases showing a lack of public accessibility and in another line of cases showing public accessibility. For instance, noted the Court, Application of Bayer, 568 F.2d 1357 (C.C.P.A. 1978), and In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989), illustrate situations that do not warrant a finding of public accessibility, whereas In re Wyer, 655 F.2d 221 (C.C.P.A. 1981), In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), and Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006), illustrate situations that found public accessibility.

The Court reasoned that, based on the record on appeal, this case fell somewhere between Bayer, in which a graduate thesis, not catalogued or placed on a library shelf and known to only three faculty members, was found not to be a printed publication because of lack of public accessibility, and Klopfenstein, in which posters displayed at professional conferences were found to be printed publications because their entire purpose was public communication of the relevant information. Like the uncatalogued thesis placed “in” the library in Bayer, the Live Traffic paper was placed “on” the FTP site. Yet, the FTP site did not contain an index or catalogue or other tools for customary and meaningful research. The Court added that the record on SJ did not indicate that an anonymous user skilled in the art in 1997 would have gained access to the FTP site and would have freely navigated through the directory structure to find the Live Traffic paper. It noted that the public accessibility factors in this case were less compelling than in Bayer, because, unlike the thesis in Bayer, the Live Traffic paper was not complete and ready for consumption, but was posted only to facilitate peer review. On the other hand, like in Klopfenstein, the paper was posted on a site and might have been available to anyone with the right knowledge. But unlike Klopfenstein, the Live Traffic paper was not publicized or placed in front of the interested public and “was most closely analogous to placing posters at an unpublicized conference with no attendees.” Slip op. at 19.

Further, the Federal Circuit stated that although the inventor, Mr. Porras, previously directed people to the same directory in which the Live Traffic paper was contained to find other papers, he always directed people to a specific paper, presumably to provide adequate aid to locate the paper. Thus, the Court found that there was no suggestion that people who had previously accessed the FTP site to obtain papers would—unprompted—look there for an unpublicized paper with a relatively obscure filename. Accordingly, the Court determined that the record placed the Live Traffic paper on the Bayer nonaccessible side of this principle, not the Klopfenstein side of public accessibility, and that the prepublication Live Traffic paper, though on the FTP site, was not catalogued or indexed in a meaningful way and not intended for dissemination to the public. It concluded that without additional evidence as to the details of the FTP site accessibility, it must vacate and remand for a more thorough determination of the public accessibility of the Live Traffic paper.

Judge Moore dissented-in-part. She opined that there was no genuine issue of fact as to the public accessibility of the Live Traffic paper because SRI failed to introduce any evidence showing an issue of fact. She noted that in light of the “mountain of evidence” presented by Defendants and the complete absence of any contrary evidence presented by SRI, the district court’s determination that the FTP site was publicly accessible must be affirmed. Dissent at 6. In addition, Judge Moore disagreed with the majority’s analysis of the case law. She noted that this case was distinguished from library cases in which theses were not catalogued adequately because the Live Traffic Paper was made available in a known and navigable directory. Further, in her opinion, several factors outlined in Klopfenstein supported a finding of public accessibility, including the length of time that the file was available, the expertise of those who might look to the FTP site for information, and the ease and simplicity with which the paper could be copied.