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January 8, 2008

Self-Enabled Destruction

SRI sued Internet Security Systems and Symantec for cyber security and intrusion detection patents. Summary judgment that SRI had created its own anticipatory prior art was upheld. Prior art is enabled as anticipatory if it suggests the invention to one of skill in the art. In a rehash of what constitutes public accessibility, a 2-1 appeals court majority fails to follow federal rule and its own precedent.

SRI International v. Internet Security Systems and Symantec (CAFC 2007-1065)

The asserted patents were 6,484,203; 6,708,212; 6,321,338; and 6,711,615.

SRI began publicizing a network intrusion technology called EMERALD in November 1996. In October 1997 SRI presented "a detailed description of a tool for tracking malicious activity across large networks."

SRI later copied is EMERALD work in its patent, with overlapping text. As well, "both the '212 patent specification and the EMERALD 1997 article feature two nearly identical figures."

During prosecution of the '212 patent, SRI disclosed the EMERALD 1997 paper in its Information Disclosure Statement, listing the paper in the patent's Other Publications section. The trial court found that "[SRI] does not argue that the EMERALD 1997 paper fails to disclose each of the limitations of the asserted claims of the '212 patent." Id. at 632. Instead, SRI contends that the EMERALD 1997 paper is not an enabling disclosure with respect to the '212 patent.

Another publication came into play: Live Traffic.

The inventors drafted the Live Traffic paper based on the EMERALD project. Mr. Porras and Mr. Valdes authored the paper in 1997. SRI displayed the paper on its web site on November 10, 1997. The four patents in this case incorporate the paper by reference. Furthermore, SRI listed the Live Traffic paper in its information disclosure to the government agency that funded some of SRI’s cyber security research.

SRI filed its patent application on November 9, 1998, one day before the critical date of November 10.

But, prior to November 10, 1997, SRI had put EMERALD and Live Traffic material on its FTP server, and sent email which attached the Live Traffic paper.

The district court ruled in summary judgment against SRI.

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 appeals the district court's grant of summary judgment of invalidity as to the Live Traffic paper and the EMERALD 1997 paper.

SRI admitted the EMERALD disclosed all the limitations of the '212 patent, but argued that the disclosure was not enabling.

"The standard for enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard under 35 U.S.C. § 112." Novo Nordisk Pharm., Inc. v. Bio-Technology Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005). "Significantly, [this 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.'" Id. (internal quote from Bristol-Myers Squibb Co. v. Ben Venue Labs. Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001)).

Both the '212 patent specification and the EMERALD 1997 paper contain similar sections explaining statistical detection. For example, both the specification and the publication contain similar descriptions of the use of NIDES algorithms for statistical detection. Furthermore, the identical figures are a graphical depiction of a network monitor to scrutinize an event stream and a diagram of a resource object that configures the network monitor. These figures show an architecture for network monitoring based on a profile engine and configurable event structures sufficient to enable one skilled in the art.

Indeed, these disclosures helped the inventors obtain issuance of the '212 patent. The issuance itself shows that the specification satisfied the enablement requirements of 35 U.S.C. § 112, ¶ 1. With the 1997 paper providing similar, or even a partially identical, disclosure to the '212 patent specification, the record meets the lower enablement standard for prior art under 35 U.S.C. § 102(b).

The CAFC concurred with the district court on EMERALD.

The issue of the Live Traffic paper was whether it was publicly available. The district court thought so.

In the district court's view, one of ordinary skill would know that the SRI FTP server contained information on the EMERALD 1997 project and therefore would navigate through the folders to find the Live Traffic paper.

This court must determine the accessibility to the public of the Live Traffic paper before the critical date. If this paper qualifies as prior art, the parties agree that its disclosure renders the asserted patents ('203, '338, '212, and '615) invalid under 35 U.S.C. § 102(b). The 35 U.S.C. § 102 printed publication bar states: "A person shall be entitled to a patent unless – (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States . . . ." 35 U.S.C. § 102(b)(emphasis added). "The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone." Application of Bayer, 568 F.2d 1357, 1361 (C.C.P.A. 1978).

"Because there are many ways in which a reference may be disseminated to the interested public, 'public accessibility' has been called the touchstone in determining whether a reference constitutes a 'printed publication' bar under 35 U.S.C. § 102(b)." In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986) (emphasis added). “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." Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). "The decision whether a particular reference is a printed publication 'must be approached on a case-by-case basis.'" In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) (internal quote from In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986); see also In re Wyer, 655 F.2d 221, 227 (C.C.P.A. 1981) ("Decision in this field of statutory construction and application must proceed on a case-by-case basis.").

In a 2-1 decision, the CAFC majority, penned by Rader with Mayer joining, was unsure, deciding the factual record non-dispositive. Judge Moore, in long-winded dissent, thought the district court ruled properly, that the Live Traffic paper was publicly accessible. If for no other reason, SRI did not present any contrary factual evidence.

In this case, the defendants supported their summary judgment motion with evidence as required by Rule 56, and SRI presented no evidence to establish that there is a genuine issue of material fact as to whether the publication at issue constitutes a “printed publication” under 35 U.S.C. § 102(b). A party may not overcome a grant of summary judgment by merely offering conclusory statements. Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 1112 (Fed. Cir. 2000).

Rule 56(e) provides, in relevant part:

When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of his pleading, but his response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If he does not so respond, summary judgment, if appropriate, shall be entered against him.

Fed. R. Civ. P. 56(e) (emphasis added). When the moving party has carried its burden under Rule 56(c), its opponent “must do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).

If nothing else, the SRI case points to the need for organizations to prioritize patenting before publication.

Posted by Patent Hawk at January 8, 2008 1:13 PM | Prior Art


"...SRI had put EMERALD and Live Traffic material on its FTP server, and sent email which attached the Live Traffic paper."

I believe the e-mail dissemination was, by itself, publication (assuming it was not "internal") which could give rise to a statutory bar, just as if you handed out two dozen copies of a draft paper at a conference. Similarly, when you put a paper up on a public FTP server, that is publication to the same extent that a single typewritten paper which is catalogued and shelved in a German library is "publication".

Patent Hawk, how does this case go against (rather than reaffirm) clearly established precedent? (I think these issues of what constitutes publication where much less settled two decades ago.)

Posted by: NIPRA anonymous at January 9, 2008 4:48 AM

An interesting case dealing the two "hot areas" on "printed publications" in the electronic document area, namely "enabling disclosure" and "publicly accessible". SRI may have dodged a "bullet" (for the moment only) with the Live Traffic paper as being "publicly accessible" because it was posted on an apparently openly accessible FTP server. If SRI had posted the paper on an FTP server for which SRI provided limited access on request, I don't think there would be any question that the paper wasn't "publicly accessible".

Regarding Moore's, yeah, she's long winded on it Her dissent might have been more compelling if the alleged infringer could have provided some evidence that an “anonymous user” had actually accessed the Live Traffic paper without any guidance. Also, the file name for the Live Traffic paper didn’t identify it other than by an acronym for the Internet Security conference. In addition, while Moore harps on the failure of the patentee to provide countervailing evidence, she completely ignores (like many other judges do in my opinion) that, under a motion for summary judgment, all factual inferences must be resolved in favor of the non-moving party (i.e., the patentee). This is a major issue (and problem) with how summary judgment motions are viewed (and granted) by the courts.

NIPRA: I don't agree that sending the paper via e-mail is necessarily a statutory bar under 35 USC 102(b). I view e-mail somewhat similar to an "electronic version" of writing a letter and putting it in envelope addressed to particular individual; that wouldn't necessarily trigger bar under 35 USC 102(b). But if the e-mail with the paper had been sent to a much larger audience, such as to all prospective attendees at a professional conference, that would be more like the Klopfenstein case, and would certainly create serious issue of "printed publication" under 35 USC 102(b).

Posted by: EG at January 9, 2008 10:28 AM

In reply to NIPRA anonymous:

Talk about obscurity - In Bruckelmyer v. Ground Heaters, Bruckelmyer appealed, arguing that the damning prior art was not "publicly accessible" because the cited figures had been dropped during prosecution of a Canadian patent, and were not part of the issued patent. The figures were only available from the Canadian patent office in Quebec as part of the patent file history.

From that ruling:

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 and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.

Bruckelmyer’s reliance on In re Cronyn to argue that the ’119 application was not “publicly accessible” is misplaced as that case is factually distinguishable. In re Cronyn, we determined that the student theses at issue were not meaningfully catalogued or indexed, and thus they were not “publicly accessible.” 890 F.2d at 1161. The significance of whether these theses were meaningfully catalogued or indexed was whether one skilled in the art could locate them.


The Live Traffic reference seemed no less obscure: it could be found under a catalogued system from the EMERALD project, which was considered publicly accessible. Hence, under the established standard, Live Traffic should have been considered publicly accessible.

Cases like these make for an argument of absolute novelty. The quid pro quo of patent protection ought to be going first to the patent office.

Posted by: Patent Hawk at January 10, 2008 1:57 AM

Having (now) quickly read the decision, I saw nothing wrong with it. I cannot see that the case in any way stands for the proposition set forth at Patently-O: "Paper Posted to Non-Indexed FTP Site Not 102(b) Prior Art". Perhaps I read the wrong case. :-)

Correct me if I'm wrong: the Court did not say the Live Traffic paper was not 102(b) prior art. It merely said the lower court hadn't properly determined the issue (or that there were issues of fact that still needed to be determined and could not be dealt with on summary judgment).

"After review of the record, this court perceives factual issues that prevent entry of summary judgment of invalidity based on the Live Traffic paper."

To EG: You are correct: if a non-internal e-mail is directed to one or very few individuals (e.g. less than a dozen), it may not be considered a publication. However, if I e-mail PatentHawk with my invention knowing (or expecting) that he will make it available to his readers, that may be publication - I suspect that would be a question of fact for the court to decide on a case-by-case basis.

PatentHawk: Thank you for your post. Closer to home, all our file wrappers (only available at the USPTO) are considered "publications" (for the purpose of 102b) as of the issue date of the patent. Attorney arguments, examiner combinations, reference interpretations, diagrams (attachments) presented in interviews, informal drawings, deleted subject matter, etc. all become published prior art (i.e. 102b publications) even though not part of the issued patent.

If I (as a searcher) can rightfully and repeatedly find and get my hands on a document as a member of the public (that is to say, the USPTO, the Canadian Patent Office, MIT's Barton Engineering Library, a German library, a DOD research lab, a public FTP server, or any other publicly accessible facility will not deny me), then it's likely published prior art. The requirement that a paper be "indexed" has always been minimal (a single card in a local card catalog indexing by title and/or author's name has always been sufficient... Perhaps In re Cronyn would have come out the other way if it were better argued).

Posted by: NIPRA anonymous at January 10, 2008 3:17 AM

"However, if I e-mail PatentHawk with my invention knowing (or expecting) that he will make it available to his readers, that may be publication - I suspect that would be a question of fact for the court to decide on a case-by-case basis."


Interesting point. I'm not sure the e-mail itself would be sufficient but certainly the publication of it by Patent Hawk would be. The hypo you give is analogous to an author submitting an abstract of a proposed journal article for publication; I'm pretty sure the submission of the abstract alone doesn't qualify under 35 USC 102(b), especially if the audience reviewing the abstract is limited (normally the case).

The SRI International case definitely raises interesting questions about the "public accessibility" aspect of 35 USC 102(b) when considering electronic documents posted on FTP servers accessible via the Internet. Relying on "hard copy" cases like Bayer, etc., for supporting precedent may be illusory with the enhanced ability to search for such documents using search engines, such as Google. In fact, someone on a different blog has astutely suggested this point. This subject would make a very interesting law review article, certainly one I might consider writing.

Posted by: EG at January 10, 2008 5:38 AM

EG: I see your point, so bear with mine:

A publisher sends 100 copies of a technical treatise to libraries for dissemination to the public. The libraries "date stamp" the treatise upon receipt. At some time later, each of them indexes the treatise in their catalog. What is the publication date of the treatise? What if no one came to the library the day it was indexed (because the library was closed)? What if instead of sending it to 100 libraries the publisher sent it to only two (e.g. the British Library and the Library of Congress, with the copyright registration)?

Does this mean (I wonder) that we can no longer rely on the date stamps from the Library of Congress as a publication date? (Just wondering.)

Posted by: NIPRA anonymous at January 10, 2008 8:02 AM


You raise some very intriguing factual issues about when, and especially what date, a publication becomes "publicly accessible". I don't think any of the relevant Federal Circuit case law precedent addresses these questions you raise, and each may be a "case-by-case" determination (I know such uncertainty is not what most people are looking for).

The date of receipt would at least be evidence of when the entity received the document. But it may not be conclusive proof that the document was "publicly accessible" on the date stamped.

The number libraries that receive the document (100 or 2 well-known) normally won't be relevant to the issue of "publicly accessible" but instead how readily could someone looking for that type of document find it in the library. Again, a factual question for which there may be no hard and fast answer.

Hope this gives you some clue on the questions you raise. Very thoughtful and extremely relevant.

Posted by: EG at January 10, 2008 3:45 PM

I believe SRI has won this case in the Federal Circuit (9/24/08). Have not had a chance to read an opinion.

Posted by: rsmskc at October 9, 2008 1:35 PM

"SRI was represented by Fish & Richardson, who should have known better" (from Patent Prospector in 2006).

Fish and Richardson ultimately won the case for SRI.

"Patent Hawk" should have known better than to comment about a case without investigation.

Posted by: plink at October 10, 2008 9:11 AM