Docket No. 2013-1392
RADER, PROST, CHEN
May 27, 2014
Brief Summary: DC claim construction found not to conflict with the claims or exclude the preferred embodiment. Newsgroup post was found to be a printed § 102 publication (“a printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication”).
Summary: Suffolk appealed DC decision that claims 1, 6, 7 and 9 directed to methods and systems for controlling a server that supplies files to computers rendering web pages were anticipated by a Usenet newsgroup post. The decision was based on construction of the claim term “generating said supplied file” as “creating or tailoring a file, as distinct from selecting an existing file, in dependence upon the received identification signal”. Suffolk unsuccessfully argued in this appeal that the claims themselves do not support the DC’s construction, the DC ignored the implicit definition of the specification and the preferred embodiment is excluded. Suffolk also argued that the post is not a printed § 102 publication because those of ordinary skill in the art were not the audience (“newsgroup was populated mostly by ‘beginners’”) and locating it “would be too difficult”. Regarding the first argument, the FC panel explained that “Suffolk seems to misunderstand the level of ordinary skill in the art at that time” (e.g., “no courses or books concerning” the technology available at the time) and “those of ordinary skill in the art actually were using such newsgroups”. Suffolk’s argument regarding accessibility was found unpersuasive because “Suffolk overstates the difficulty in locating the Post after publication” and “a printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication” (citing In re Klopfenstein (FC 2004; poster board presentation displayed for several days at industry association meeting) and MIT (FC 1985; oral presentation and distribution of six printed copies), noting this case is unlike SRI Int. (FC 1986; not enough evidence to show that file posted on an FTP server was publicly accessible)). Suffolk also argued that SJ was inappropriate because there were “serious questions” regarding the reliability of the Post (“‘second-hand reproduction of an old Usenet post’ that was admittedly altered”) but the FC panel disagreed the evidence created a genuine issue of material fact. And the exclusion of Suffolk’s expert report, revised after claim construction, was found appropriate given the construction “did not vary greatly from the parties’ proposals.” The remaining arguments regarding whether the Post disclosed every limitation of the claims were dismissed as attorney argument without affirmative evidence. Therefore, the DC decision was affirmed.