07/23/14

Suffolk Tech., LLC v. AOL, Inc.: A Usenet Post Invalidates Patent under 102

Category: 102  
 
 
 
 By: John Kirkpatrick, Contributor 
TitleSuffolk Tech., LLC v. AOL, Inc., No. 13-1392 (Fed. Cir. May 27, 2014).
Issues
[1a] Suffolk argues that the district court erred in construing the claim term “generating said supplied file” [as recited in dependent claim 6] as “creating or tailoring a file, as distinct from selecting an existing file, in dependence upon the received identification signal.” Suffolk’s position is that the generated file could depend on the content of the requesting web page and not just the received identification signal.
Suffolk Tech. at *6 (text added, internal citation and emphasis removed).
[1b] Suffolk argues that the specification implicitly defines “generating said supplied file” [as depending on the content of the requesting page] and that the district court erred in ignoring that implicit definition.
Id. at *7 (text added).
[1c] Suffolk argues that the district court’s construction effectively excludes the preferred embodiment that this claim language was intended to cover.
Id. at *8.
[2a] According to Suffolk, [a Usenet Post is not prior art because] the Post’s audience was not those of ordinary skill in the art and locating the Post would be too difficult.
Id. at *10 (text aded).
[2b] [S]erious questions undermining the reliability and accuracy of the Post should have been submitted to the jury.”
Id. at *12 (text added).
[2c] [T]he district court improperly excluded testimony from [Suffolk's] validity expert.
Id. at *13 (text added).
[2d] According to Suffolk, there are genuine factual issues concerning whether the Post disclosed every limitation in the contested claims.
Id. at *15.
Holdings
[1a] [T]he undisputed construction of “identification signal”—“digital information that identifies the source, origin, or location of a file”—says nothing about the content of the requesting page.
Suffolk Tech. at *6 (text added, emphasis removed).
[1b] [T]he specification, when viewed in context, supports the district court’s construction that “generating said supplied file” depends on the received identification signal and not the content of the requesting web page.
Id. at *8 (text added).
[1c] [The preferred embodiment is not excluded] when the entire description of the preferred embodiment is considered.
Id. (text added).
[2a] [T]he record indicates that those of ordinary skill in the art actually [at the time] were using such newsgroups [and] a printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.
Id. at *10-11 (text added, internal citation removed).
[2b] [T]he asserted evidentiary weaknesses in the Post are insufficient, without more, to create a genuine issue of material fact.
Id. at *13 (text added).
[2c] [T]he district court did not abuse its discretion in [excluding testimony when the expert goes from having no opinion concerning a claim to having an opinion because the expert] did opine on the validity of dependent claim 6 in his initial report and the district court’s construction did not vary greatly from the parties’ proposals.
Id. at *14 (text added).
[2d] Google bears the burden to show that there are no genuine issues of material fact. It has met that burden. And Suffolk’s attorney arguments, with no affirmative evidence, are insufficient to undermine Google’s showing.
Id. at *15.  
 
 
Procedural History[Suffolk] appeals from the summary judgment of the United States District Court for the Eastern District of Virginia holding [claims 1, 7, and 9] of Suffolk’s U.S. Patent No. 6,081,835 [...] invalid [as] anticipated by a Usenet newsgroup post.
Suffolk Tech. at *2 (text added).
 
 
Legal Reasoning (Rader, Prost, Chen)
Background
Background of the ’835 Patent [The ’835 patent] is directed to methods and systems for controlling a server that supplies files to computers rendering web pages. [...] The patent discloses using the address of the referring web page to determine whether to serve a file, and if so, which file.
Suffolk Tech. at *2 (text added).
Representative Claim Language1. A method of operating a file server, said method comprising the steps of:

receiving a request for a file;

determining if the request includes a received identification signal identifying an originating file from which said request originated;

comparing any said received identification signal with the one or more predetermined identification signals; and

deciding which file, if any, is to be supplied in dependence upon said determining and comparing steps, and if in the deciding step it is decided that a file is to be supplied, supplying said file.

6. A method as in claim 1 wherein said deciding step further comprises generating said supplied file.

Id. at *2-3 (internal citation and emphases removed).
[1] Claim Construction
Relevant LawClaim construction is a question of law that we review without deference. [...] In construing claims, this court relies primarily on the claim language, the specification, and the prosecution history. [...] After considering this intrinsic evidence, a court may also seek guidance from extrinsic evidence such as expert testimony, dictionaries, and treatises.
Suffolk Tech. at *5 (text added, internal citations removed).
[1a] Only the Received Identification Signal is Listed in the ClaimsClaim 1’s deciding step depends upon the preceding determining and comparing steps, both of which in turn depend upon a “received identification signal.” [...] All claim 6 does is add a “generating said supplied file” limitation to claim 1’s deciding step. Neither claim 1 nor claim 6 references any variables or mechanisms for conveying information about the requesting page other than the “received identification signal.” And, the undisputed construction of “identification signal”—“digital information that identifies the source, origin, or location of a file”—says nothing about the content of the requesting page. Thus, the only variable actually listed in the claims that the generated file could depend on is the received identification signal and not the content of the requesting web page.
Id. at *6 (text added, emphases removed).
[1b] The Specification When Viewed in Context Supports the District Court's ConstructionSuffolk points to [excerpts from the '835 patent] that information can be “tailored in dependence upon the current web page being displayed by the browser.” [...] [The excerpts], when taken in full, describe two basic steps: (1) identifying from which web page the request is made; and (2) customizing an HTML file accordingly. Importantly, the first step is not identifying the content of the requesting page. [...] Thus, the specification, when viewed in context, supports the district court’s construction [...].
Id. at *7-8 (text added).
[1c] The Preferred Embodiment Uses the Referrer
Address to Generate the Correct File		Suffolk argues that the district court’s construction effectively excludes the preferred embodiment that this claim language was intended to cover. But this argument fails when the entire description of the preferred embodiment is considered. [I]t is clear that the embodiment uses the referrer address to generate the correct file.
Id. at *8 (text added).
[2] Summary Judgment of Invalidity
Relevant Law“Whether an anticipatory document qualifies as a ‘printed publication’ under § 102 is a legal conclusion based on underlying factual determinations.” [...] “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).” [...] “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.”
Suffolk Tech. at *9-10 (text added, internal citations removed).
[2a] Persons of Ordinary Skill Used Newsgroups; Dialog Was the Purpose of Newsgroup PostingsSuffolk contends that the Usenet newsgroup was populated mostly by “beginners,” not those of ordinary skill in the art. Suffolk bases this claim on [the person who posted the question commenting] that he was a “newbie” and that “this question might seem ridiculous.” [...] Suffolk seems to misunderstand the level of ordinary skill in the art at that time. According to [the person who answered the question], there were no courses or books concerning CGI at the time of the Post in 1995 [...]. Second, the record indicates that those of ordinary skill in the art actually were using such newsgroups. Further, [the poster's] question would only seem “ridiculous” if the other subscribers had more skill in the art than he. [...] [In addition,] a printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication. [...] The present case is not, as Suffolk contends, more similar to SRI International where [...] we did “not find enough evidence in the record to show that [a file posted on an FTP server] was publicly accessible and thus a printed publication under 35 U.S.C § 102(b).” [...] [Here,] dialogue with the intended audience was the entire purpose of the newsgroup postings.
Id. at *10-12 (text added, internal citations removed).
[2b] No Affirmative Evidence Challenging the Post’s Material FactsSuffolk points out that each post was altered to bear a timestamp of 12:00 a.m. and that the email addresses were altered to protect users from spambots. Suffolk then argues that these small alterations “could suggest to a jury that other parts of the post may also have been inaccurate or altered.” [...] [However,] Suffolk presents no affirmative evidence challenging the Post’s material facts. And [the answerer] himself authenticated the Post [...].
Id. at *12-13 (text added, internal citations removed).
[2c] District Court Did Not Abuse Its Discretion by Excluding Expert Testimony[Suffolk's expert,] Dr. Rhyne offered no opinion on whether the Post anticipated claims 1, 7, or 9 of the ’835 patent. Dr. Rhyne did, however, opine that the Post did not anticipate claim 6. After the district court issued its claim construction, Dr. Rhyne filed a supplemental report in which he stated for the first time that the Post did not anticipate claim 1. [...] Suffolk argues that Dr. Rhyne’s new opinion [...] should be permitted because the district court “chang[ed] the landscape” when it construed the term “identification signal” as “digital information that identifies the source, origin, or location of a file.” [...] Suffolk’s proposed construction of “received identification signal” was “a signal identifying an originating file from which said request originated.” [...] The intervening claim construction, according to the district court, did not warrant such a change. [...] We do, however, conclude that the district court did not abuse its discretion in doing so here, where Dr. Rhyne did opine on the validity of dependent claim 6 in his initial report and the district court’s construction did not vary greatly from the parties’ proposals.
Id. at *13-14 (text added, internal citations removed).
[2d] Attorney Arguments are Insufficient to Undermine Credible Testimony in Support of Summary JudgmentAccording to Suffolk, there are genuine factual issues concerning whether the Post disclosed every limitation in the contested claims. Specifically, it argues that “the exemplary files disclosed[—abc.html—]were not in the context of a URL and did not provide additional information (beyond “abc.html”) communicating source, origin or location.” [...] Without expert testimony, however, Suffolk’s position is mere attorney argument. And here, those attorney arguments are insufficient to undermine the credible testimony from Google’s expert that “abc.html” is an identification signal. Further, Suffolk argues broadly that summary judgment is inappropriate because Suffolk “can still attack Google’s affirmative case (on cross-examination or otherwise).” [...] But these broad statements, without evidentiary support, are insufficient to make summary judgment inappropriate. To hold otherwise would improperly empower cross-examination with the ability to defeat nearly all motions for summary judgment.
Id. at *15 (text added, internal citations and emphasis removed).
Conclusion
[1], [2] We conclude that the district court did not err in its claim construction or its grant of summary judgment of invalidity.
Suffolk Tech. at *16.


Image Attribution Statement: Benjamin D. Esham / Wikimedia Commons, “Usenet Big Nine”, available under a Creative Commons Attribution 2.0 Generic license, http://commons.wikimedia.org/wiki/File:Usenet_Big_Nine.svg (last visited July 23, 2014) (image edited).

 
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