03/24/14

Title	In re Enhanced Security Research, LLC, No. 2013-1114 (Fed. Cir. Jan. 13, 2014).
Issues	[1] [Obviousness] With respect to obviousness, the critical issue is whether the Manual in combination with Liepins teaches a person of ordinary skill in the art how to assess the severity of an attempted security breach and then block that attempted breach based on its severity. Enhanced Security Research, LLC at *8 (text added).
	[2] [Prior Art] [The second issue is that Enhanced Secuirty Research] contends that the [NetStalker] Manual is not prior art. Id. at *6. (text added)
Holdings	[1] [Obviousness] [W]e hold that the examiner and Board properly treated the NetStalker Manual as publically-available prior art and, having done so, correctly concluded that the teachings of the Manual and Liepins render the amended ’236 patent claims at issue obvious under 35 U.S.C. § 103. [2] [Prior Art] We further hold that ESR has failed to demonstrate the requisite attorney diligence under Rule 131, and, therefore, the ’236 patent does not predate the publication date of the Manual. Id. at *23 (text added).

Legal Reasoning (Dyk, O'Malley and Taranto)
[1] Legal Analysis: Obviousness
Relevant Language at Issue	[T]he amended ’236 patent claims a device that examines the data entering and exiting a LAN, assigns weights to any attempted security breaches, and initiates predetermined responses depending on the assigned weights of the attempted breaches. ESR argues that a combination of NetStalker and Liepins [as prior art] does not disclose: (1) assigning a weight to an attempted security breach; or (2) blocking incoming communications based on that assigned weight. Enhanced Security Research, LLC at *8. (text added)
NetStalker Reference	[T]he [NetStalker] software [manual describes how it] allows users to define what types of events (for example, an attempted login for a particular source) will count for the purposes of triggering an alarm. The user can program the software such that it recognizes the number of intrusions of a particular type as more “severe” than others. Therefore, the NetStalker software teaches responding to attempted breaches based on user-defined criteria, i.e., creating a causal connection between the user-defined parameters and the subsequent alarm response, including the “Shun” response. What the Manual does not disclose is the automatic assignment of different weights to different types of attempted security breaches. Id. at *10.
Liepins Reference	Liepins fills [the gap left by NetStalker's lack of automatic assignment of weights] with its systematic rule-based framework that is capable of automatically identifying exceptional network activity. [...] [Liepins] automatically generates rules wherein activity that is indicative of an attempted breach is more likely to fail a partiuclar rule. Each rule is assigned a weight such that the strengths...reflect the confidence that the rules flag transactions that should be flagged and don't flag those that shouldn't. Id. at *10-11. (text deleted).
Combination Obvious	In short, the features of the amended ’236 patent claims were disclosed by the combination of the Manual and Liepins.[...] We therefore conclude that the Board did not err in finding the claims obvious. Id. at *12-13. (text deleted).
[2] Legal Analysis: Qualifying Prior Art
NetStalker Manual As Prior Art	ESR contends that the Board erred in treating the Manual as prior art. [...] Under 35 U.S.C. § 102(a)(1), prior art encompasses any matter that “was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” This court has interpreted § 102 broadly, explaining that even relatively obscure documents qualify as prior art so long as the public has a means of accessing them. Enhanced Security Research, LLC at *13. (internal citations omitted) (text deleted).
Hallmark of Public Availability is Accessibility	If accessibility is proved, there is no requirement to show that particular members of the public actually received the information. In this case, the title page of the [NetStalker] Manual contains an inscription dating it to May 1996. Id. at *13. (internal citations and quotes omitted).
Declaration May Attest to Availability	ESR, however, challenges the Manual’s claimed date of priority, arguing that the version of the Manual that the examiner relied on may not have been available in May 1996 and that there are indications that this version was a draft rather than a final document available to the public. However, Stephen Smaha, the Chief Executive Officer of the company that produces the NetStalker software, filed a declaration (“Smaha Declaration”) with the PTO averring that the version of the Manual before the examiner was available in May 1996. [...] [Therefore, W]e conclude that substantial evidence supports the Board’s finding that the Manual constituted publically-available prior art under § 102(a)(1). Id. at *13-14. (text added and deleted).
No Showing of Diligence by ESR	Finally, ESR argues that even if the ’236 patent would have been obvious in light of NetStalker and Liepins, NetStalker should not be considered invalidating prior art because ESR conceived of the invention before the publication of the NetStalker Manual, and was diligent in reducing it to practice. The Manual contains an inscription that dates it to May 1996, and the ’236 patent is a continuation in part of an application filed on October 7, 1996. Even if ESR had established a conception date before May 1996 (earlier than the publication date of the Manual), we find no error in the Board’s decision that there was no showing of diligence in reducing the invention to practice. Id. at *20. [R]easonable diligence can be shown if it is established that the attorney worked reasonably hard on the particular application in question during the continuous critical period.[...] [T]he attorney’s records should “show the exact days when activity specific to the patentee's application occurred.[...] [T]he Board found that, apart from records showing work on May 4, 6, and 20, and activity in July, ESR failed to provide records or other evidence showing the exact days when activity specific to this application occurred. Id. at *21-22. (internal citations and quotations omitted) (text deleted). [Accordingly,] substantial evidence supports the Board's finding that ESR failed to demonstrate the reuqisite attorney diligence [to disqualify the NetStalker manual as prior art]. Id. at *23.(text added).
Conclusion
	Affirmed. Enhanced Security Research, LLC at *23.

O'Malley Circuit Judge, Dissenting Opinion. Enhanced Security Research, LLC,  O'Malley Op., at *1.

Dissent on grounds of incompleteness and lack of public accessiblity of prior art which thereby mooted the question of obviousness

Because the Board of Patent Appeals and Interferences (“Board”), now the Patent Trial and Appeal Board, erred in relying on a facially incomplete reference and was not supported by substantial evidence in finding that the same reference was publicly available as of the critical date, I would reverse its decision. I cannot endorse allowing the Board to strip Enhanced Security Research, LLC (“ESR”) of its right to a validly issued patent on such a suspect record. I, thus, respectfully dissent. Enhanced Security Research, LLC, O'Malley Op., at *2.

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