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Internet Discussion Systems as Prior Art
June 10, 2014

The Federal Circuit's recent decision inSuffolk Technologies, LLC, v. AOL Inc., and Google Inc., adds another item to the list of "printed publications" that may preclude patenting of a claimed invention: posts on internet newsgroups.

In June 2012 Suffolk Technologies, LLC sued Google Inc. for infringement of U.S. Patent No. 6,081,835 ("the '835 patent"), related to "methods and systems for controlling a server that supplies files to computers rendering web pages." Google argued that a newsgroup post—made nine months before the priority date of the '835 patent by a college student in response to a question posed in a discussion of common gateway interface—anticipated the claims at issue.

The district court agreed with Google and granted summary judgment of invalidity.

Suffolk appealed the district court's decision, arguing that the court improperly construed the claim term "generating said supplied field," and that the newsgroup post should not be considered a printed publication under 35 U.S.C. § 102. The Federal Circuit affirmed the district court on both counts.

Suffolk argued that the district court erred by deciding that the newsgroup post was prior art, deciding that the post was accurate and reliable, omitting the testimony of their validity expert, and ultimately granting summary judgment. Suffolk asserted that the post was not made publically accessible because locating it would be too difficult, and the audience was mostly "beginners" and therefore not those of ordinary skill in the art. Suffold also asserted that, if presented to a jury, a "'second-hand reproduction of an old Usenet post'" would be discredited and that the testimony of their validity expert was crucial to the decision, and as a result summary judgment was inappropriate. The Federal Circuit was unpersuaded by any of Suffolk's arguments.

Of particular note, while the post in question was non-indexed and non-searchable, the Federal Circuit held that is was nonetheless sufficiently publically accessible to be considered a printed publication becausesomeone interested in the topic could easily locate a list of posts in the newsgroup based on its hierarchical organization. Further, the court held that the post in question was sufficiently disseminated because dialogue with the intended audience was the entire purpose of the newsgroup posting; the post elicited a number of responses; and many more people may have viewed the post.

While the decision deals with printed publications and public disclosure under pre-AIA § 102, the analysis is unlikely to be any different under the AIA.

The full decision is available here.

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