Unpublicized Paper Displayed On An FTP Server With An Acronym File Name Is Not A Printed Publication

In SRI International, Inc. v. Internet Security Systems, Inc., et al. (No. 07-1065; January 8, 2008), the Federal Circuit affirms a district court’s grant of summary judgment of invalidity as to one patent based upon an anticipatory paper, the EMERALD 1997 paper, and vacates and remands, with a dissenting opinion, the grant of summary judgment of invalidity as to the four patents at issued based upon a different paper, the Live Traffic paper, as there were genuine issues as to the public accessibility of the paper. In so doing, the Court states that on summary judgment, the pre-publication of the Live Traffic paper, though on an FTP server, was not catalogued or indexed in a meaningful way and was not intended for dissemination to the public.

SRI displayed the Live Traffic paper on its website on November 10, 1997 and the four patents at issue incorporate the paper by reference. SRI filed its patent application on November 9, 1998. The Live Traffic paper was published in the December 12, 1997 proceedings of the 1998 Symposium on Network and Distributed Systems Security (“SNDSS”). However, the Internet Society posted the 1998 SNDSS call for papers on its website and stated that all submissions were to be made via electronic mail by August 1, 1997. On August 1, 1997, the Live Traffic paper was submitted to the Program Chair for the SNDSS by electronic mail and the e-mail stated that SRI would make a copy of the Live Traffic paper available on the SRI FTP server as back up and included the specific FTP address.

The panel majority holds there was not enough evidence in the record to show that the Live Traffic paper was publicly accessible and thus, a printed publication under 35 U.S.C. § 102(b). Though the Live Traffic paper was placed on the FTP server, says the majority, the FTP server did not contain an index or catalogue or other tools for customary and meaningful research. Neither the directory structure nor the README file in the PUB subdirectory is deemed to have identified the location of papers or explained the mnemonic structure for files in the EMERALD subdirectory, or any subdirectory ; only one non-SRI person specifically knew about the availability of the Live Traffic paper. The majority concludes that, while actual retrieval of a publication is not a requirement for public accessibility, the record did not evince that the Live Traffic paper was accessible to anyone other than the peer-review committee, thus further suggesting an absence of actual public accessibility. While the FTP server directory structure (/pub/emerald/) of a well-known institution in the intrusion detection community and the acronym of “ndss98.ps” may have hinted at the path to the Live Traffic paper, an unpublicized paper with an acronym file name posted on an FTP server is deemed to resemble a poster at an unpublicized conference without a conference index of the location of the various poster presentations.