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Paper posted on public FTP site not necessarily printed publication; summary judgment reversed
January 10, 2008

In a decision this week, the Federal Circuit vacated and remanded the district court's determination that the plaintiff's patents-in-suit were invalid as anticipated by another paper that was publicly available via the patentee's FTP site before the critical date for the span of one week, finding genuine issues of material fact as to whether the paper was "publicly accessible" as required by 35 U.S.C. § 102(b) as of the critical date of the patents. The court, however, affirmed the grant of summary judgment by finding one patent invalid as anticipated by the patentee's own previous paper, as that paper was sufficiently enabled to constitute prior art.

More detail of SRI Int'l, Inc. v. Internet Security Sys., Inc. after the jump.

Plaintiff-Appellant SRI International, Inc. ("SRI") is the owner of the '203, the '212, the '338, and the '615 patents relating to cyber security and intrusion detection. All four patents originated from a single November 9, 1998 application. Two years prior, in 1996, SRI began publicizing its Event Monitoring Enabling Responses to Anomalous Live Disturbances ("EMERALD") project relating to network intrusion detection. In June 1997, SRI posted an EMERALD 1997 paper on its SRI file transfer protocol ("FTP") server, and in October 1997, SRI presented EMERALD 1997 at a conference, after which the conference published the peer-reviewed article. The EMERALD 1997 paper and the '212 patent specification contain some overlapping material, including two nearly identical figures and some identical text. During prosecution of the '212 patent, SRI disclosed the EMERALD 1997 paper in its Information Disclosure Statement. The trial court found that while SRI admitted that the EMERALD 1997 discloses each of the limitations of the asserted claims of the '212 patent, SRI instead contended that the EMERALD 1997 paper was not an enabling disclosure with respect to the '212 patent.The other piece of prior art in contention, the Live Traffic paper, was drafted by the inventors in 1997, and was based on the EMERALD project. The paper was displayed on SRI's web site on November 10, 1997. The four patents-in-suit incorporated the Live Traffic paper by reference, and the paper was listed in SRI's information disclosure statement with a publication date of December 12, 1997 from the proceedings of the 1998 Symposium on Network and Distributed Systems Security ("SNDSS"). The Internet Society ("ISOC") posted the 1998 SNDSS call for papers on its web site. The call for papers stated that all submission were to be made via e-mail by August 1, 1997 with a backup submission by postal mail. The call for papers did not include any information on confidentiality of paper submissions. On August 1, 1997, co-inventor Porras sent an e-mail to SNDSS in response to the call for papers and attached the Live Traffic paper to his e-mail, stating that SRI would make a copy of the Live Traffic paper on the SRI FTP server as a backup and included the full path and filename of the paper. SRI brought action against defendants Internet Security Systems, Inc. ("ISS") and Symantec Corporation ("Symantec") for infringement of the '203, the '212, the '338, and the '615 patents. Defendants moved for summary judgment that each of the four patents-in-suit was invalid under 35 U.S.C. § 102(b) in view of the Live Traffic and the EMERALD 1997 papers. SRI countered with a motion for partial summary judgment that the Live Traffic paper did not qualify as a printed publication under § 102(b), and also moved for partial summary judgment that the EMERALD paper did not anticipate.The district court ruled that the Live Traffic paper was a printed publication that anticipated all asserted claims of the four patents-in-suit. The trial court also determined that the EMERALD 1997 paper was enabling and anticipated the '212 patent. SRI appealed.On appeal, the Federal Circuit first addressed the EMERALD paper, noting that the standard for enablement of a prior art reference for purposes of anticipation under § 102 differs from the enablement standard under § 112. As stated by the court:

Significantly, [the court has] stated that "anticipation does not require actual performance of suggestions in a disclosure. Rather, anticipation only requires that those suggestions be enabled to one of skill in the art."

SRI asserted that the EMERALD 1997 paper was not an enabling disclosure because implementing the EMERALD 1997 concepts required extensive and undue experimentation. The court, however, discerned that the district court correctly determined that the EMERALD 1997 paper enabled one of ordinary skill in the art to practice the claimed invention of the '212 patent. Based on the '212 patent's specification, the EMERALD 1997 paper, and the record before the district court, the Federal Circuit held that no reasonable jury could conclude that the EMERALD 1997 paper did not enable statistical profiling of network traffic. The court therefore affirmed the district court's ruling, as a matter of law, of invalidity of the '212 patent as anticipated by the EMERALD 1997 paper.In addressing the Live Traffic paper, the issue for the court was whether the Live Traffic paper was accessible to the public before the critical date of November 9, 1997. The parties agreed that if the paper qualified as prior art, its disclosure rendered the four patents-in-suit invalid under § 102(b). The district court based its summary judgment ruling on the basis that SRI's FTP site was publicly accessible prior to the critical date. The district court further held that co-inventor Porras provided the FTP site to other members of the intrusion detection community both in presentations and via e-mail. In the district court's view, one of ordinary skill would have known that the SRI FTP server contained information on the EMERALD 1997 project and therefore would have navigated through the folders to find the Live Traffic paper. In contrast, SRI contended that the Live Traffic paper did not qualify as a publication under § 102(b) on the basis that the e-mailing of the paper to SNDSS and placement on the FTP server for seven days as a backup to the e-mail was a private pre-publication communication. SRI further contended that the file name of the Live Traffic paper was not indexed or catalogued in any meaningful way to enable a person of ordinary skill to locate the paper.The Federal Circuit compared the placement of the Live Traffic paper on the server to a graduate thesis in a university library that had not been catalogued or placed on the shelves, as described in Application of Bayer, 568 F.2d 1357, 1358-59 (CCPA 1978), and to the posters placed on display at professional conferences, as described in In re Klopfenstein, 380 F.3d 1345, 1347-50 (Fed. Cir. 2004). The court determined the Live Traffic paper fell somewhere between the situations in the Bayer and Klopfenstein cases. First, the court noted that while the Live Traffic paper was placed "on" the FTP server, the server did not contain an index or catalogue or other tools for customary and meaningful research. Further, only one non-SRI person, the person from SNDSS to which the paper was e-mailed, specifically knew about the availability of the Live Traffic paper, similar to the knowledge of the thesis's availability by only three professors in the Bayer case. Thus, the court held that the district court's summary judgment record did not show that an anonymous user skilled in the art prior to the critical date would have gained access to the FTP server and would have freely navigated through the directory structure to find the Live Traffic paper.Therefore, on summary judgment, the Federal Circuit found that the pre-publication Live Traffic paper, though on the server, was not catalogued or indexed in a meaningful way and was not intended for public dissemination so as to qualify as prior art under § 102(b). Without additional evidence as to the details of the 1997 SRI FTP server accessibility, the court vacated and remanded to the district court for a more thorough determination of the public accessibility of the Live Traffic paper based on additional evidence and in concert with its opinion.Judge Moore dissented from the majority's holding relating to the Live Traffic paper. In this regard, Judge Moore would have held that the defendants presented sufficient evidence demonstrating that the Live Traffic paper was posted on the Internet on a public FTP server for seven days and was 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 Live Traffic 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.

To read the full decision in SRI Int'l, Inc. v. Internet Security Sys., Inc., click here.

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