Suffolk Techs., LLC v. AOL Inc.

Addressing the standard for establishing that an alleged prior art reference qualifies as a “printed publication,” the U.S. Court of Appeals for the Federal Circuit affirmed summary judgment that a non-indexed, non-searchable newsgroup post invalidated a patent, finding that a printed publication does not need to be easily located to qualify as prior art.  Suffolk Techs., LLC v. AOL Inc., Case No. 13-1392 (Fed. Cir., May 27, 2014) (Prost, J.)

Suffolk sued AOL and Google on a patent directed to controlling a server that supplies files to computers that render web pages.  The alleged invalidating reference was a 1995 posting in an online newsgroup (Post).  A college student authored the Post to answer a question posed by another user.  Although the newsgroup’s policy was to alter each entry’s timestamp and e-mail address to protect its users from spambots, the author authenticated the substance of his response.  After the district court found that the asserted claims of the patent were anticipated by the Post, Suffolk appealed.

Considering Suffolk’s appeal of summary judgment on invalidity, the Federal Circuit addressed Suffolk’s arguments that the Post was neither a “printed publication” nor reliable.  Suffolk argued that the Post was not prior art because it was too difficult for a person skilled in the art to locate—the post was not indexed, was not searchable and could only be sorted by date.  The Federal Circuit rejected this argument because a printed publication need not be easily found if it was sufficiently disseminated at the time of publication.  Because the Post was among six responses during the week following the original query, the Federal Circuit determined that the Post was sufficiently disseminated.  Although the Federal Circuit disagreed that the Post was difficult to locate, it explained that ease of location is immaterial if the reference was disseminated at publication.

In addition, despite the fact that the Post’s author authenticated the substance of his Post, Suffolk maintained that the altered timestamp and e-mail address could suggest that the Post is inaccurate and unreliable.  Without affirmative evidence indicating that the Post’s substance was altered, however, Suffolk could not defeat summary judgment.

Lastly, the Federal Circuit rejected Suffolk’s argument that a genuine issue of material fact existed, even if the expert witness testimony was excluded.  Suffolk argued that the Post did not disclose all of the claim elements.  The Federal Circuit rejected this argument for two reasons.  First, mere lawyer argument could not undermine credible expert testimony supporting summary judgment.  Second, the threat of cross-examination, without actual evidence, cannot overcome a summary judgment motion—if it could, then all such summary judgment motions would necessarily be denied.