Summary: CAFC affirms claim construction, finds newsgroup is an authentic printed publication, and expert testimony may be excluded where no opinion was initially offered and the court’s claim construction did not vary greatly from parties’ proposals.

Case: Suffolk Technologies, LLC V. AOL Inc., No. 2013-1392 (Fed. Cir. May 27, 2014) (precedential). On appeal from E.D. Va. Before Rader, Prost, and Chen.

Procedural Posture: Patent holder Suffolk Technologies, LLC appealed final judgment of invalidity. CAFC affirmed.

  • Claim Construction: The district court’s construction of the claim term, “generating said supplied file,” as meaning “creating or tailoring a file, as distinct from selecting an existing file, in dependence upon the received identification signal,” was affirmed. The district court’s construction was found to be supported by both the claim language and the specification.
  • Prior Art Invalidity – Printed Publication: The district court’s finding that a post on a Usenet newsgroup is a printed publication within the meaning of 35 U.S.C. § 102(b) was affirmed on the grounds that (i) the record indicated that persons of ordinary skill in the art used such newsgroups, and (ii) the post was sufficiently disseminated to persons of ordinary skill in the art at the time of its publication, regardless of whether it was indexed or easily searchable.
  • Prior Art Invalidity – Authenticity:  Alteration of timestamps and email addresses on posts in a newsgroup does not, in and of itself, create a genuine issue of material fact with respect to the post’s accuracy and reliability.
  • Expert Witness: The district court did not abuse its discretion in excluding expert testimony concerning the validity of a claim (purportedly offered in response to the district court’s claim construction) where the expert had offered no opinion concerning the validity of that claim in either his initial expert report or deposition, and the court’s construction did not vary greatly from the parties’ proposals.