By: Saul Acherman

This case hinged on the question of whether a reference made by an inventor constituted a “printed publication.” The US Court of Appeals for the Federal Circuit held that determining such question is “a fact-based inquiry approached on a case-by-case basis.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., Case No. 07-1065 (Fed. Cir., Jan. 8, 2008), and fortunately for SRI, the court found the facts supported a finding favorable to Plaintiff SRI.

SRI asserted four patents involving cyber-security related technology. All four of the patents claimed priority to a single application that was filed over a year after a paper, authored by the inventors, had been posted on SRI’s FTP server, a protocol for exchanging files over computer networks such as the internet. The paper, entitled “Live Traffic,” was referenced by all four patents and discussed aspects of the patented invention.

The Court explained that “public accessibility” is the “touchstone” in determining whether a reference constitutes a printed publication, therefore qualifying it as prior art. In this case, the facts did not support a finding that SRI had made the reference publicly accessible.

Apparently, the inventors had posted their paper in a sub-directory along with other papers related to their project. However, the FTP server did not provide an index or catalogue or any means of searching for the document. Additionally, there was no record of anyone accessing the paper, or that anyone skilled in the art would have been able to find the document. Furthermore, the record showed that one of the inventors had, on several instances, pointed users to certain other files in their server that were related to the project, in each instance directing the user directly to a particular file rather than providing a means for a search or allowing a user to search the entire database.