Theoretical Availability on the Internet Without Indexing is Not a Printed Publication

SRI International, Inc. v. Internet Security Systems, Inc., [2007-1065] (January 8, 2008) [RADER, Mayer, Mooore] The Federal Circuit affirmed summary judgment of one patent based on the patentee's own disclosures, but because of factual questions about the availability of another disclosure, reversed as to another patent.

BRIEF: The Patentee challenged whether its first disclosure, the Emerald Paper, was enabling, but the Federal Circuit found the overlap between the disclosure and the patent specification significant, and concluded that if the patent specification was enabling than the Emerald Paper was too. Regarding the second disclosure, the Live Traffic Paper, the Federal Circuit said that the question was whether it was sufficiently publicly accessible: "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)." The Federal Circuit said that 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."

The Federal Circuit said that on summary judgment, the pre-publication Live Traffic paper, though on the FTP server, was not catalogued or indexed in a meaningful way and not intended for dissemination to the public.Without additional evidence as to the details of the 1997 SRI FTP server accessibility, this court vacates and remands for a more thorough determination of the publicity accessibility of the Live Traffic paper based on additional evidence and in concert with this opinion.