UseNet is Prior Art

By Dennis Crouch

Suffolk Tech v. AOL and Google (Fed. Cir. 2014)

This is a prior art case. Suffolk’s patent application was filed back in 1996, but it turns out that the invention was described in a 1995 UseNet newsgroup post posted by a college student. The question on appeal is whether that posting counts as prior art under 35 U.S.C. 102(a) (pre-AIA).

Under the statute, a patent is invalid if “(a) the invention was … described in a printed publication … before the invention thereof by the applicant for a patent.” Courts have repeatedly found that online content fits within the definition of printed publication. Rather, the touchstone question is whether the material was sufficiently publicly accessible. Public accessibility looks to the ability of persons who would be interested or skilled in the subject matter to locate the reference using only reasonable diligence. If a reference is sufficiently disseminated at time of original publication then the ability to later locate the reference is irrelevant.

Today, UseNet materials are indexed by various search engines and would clearly be considered prior art. In 1995 the indexing was not so strong, but the appellate panel here affirmed that the postings clearly fall within the scope of printed publications. For that legal conclusion, the court relied upon a handful of facts:

  • The record indicated that those of ordinary skill in the art were using the UseNet newsgroups in 1995, including Suffolk’s own technical expert.
  • Although not fully indexed, the UseNet group was structured in a hierarchical manner that would have allowed someone interested in the topic to identify the particular group and read the posts.
  • The post in question resulted in at least six responses in the week following the publication – indicating that the post was likely sufficiently distributed at publication.

Invalidity affirmed.

The case was discussed in an earlier Patently-O Posting titled Structuring a Privateering Contract (2012).

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Note – although this case was decided under pre-AIA rules, its holding should apply equally to the restructured Section 102 that also identifies “printed publications” as a form of prior art.

17 thoughts on “UseNet is Prior Art

  1. Usenet was rather widely used in the mid-90’s. I used it extensively. Advanced programs were available to watch and filter select groups for desired content. It seems like counsel was grasping at straws.

  2. A thought for consideration:

    Does not the notion of “is used, or can be used” run into conflict with the notion that PHOSITA is omniscient and all-knowing – and even more so in the post-AIA world?

    Yes, I am re-injecting the notion that in the post-AIA world, PHOSITA can be charged with knowing that which appears to be unreasonable.

    This does align with one trepidation of MaxDrie’s in that the distinction of use of art for novelty and for obviousness is seemingly blurred moreso now in the US than anywhere else in the world. Did Congress go too far? Will the un**foreseen consequence of PHOSITA knowledge to now include publications in any language in any remote corner of the world be open to abuse by those with vested interests in weakening the patent right?***

    ** this consequence was broadly noted – both on social media vehicles such as this and in personal communications to members of Congress, so these effects are not really that unforeseen

    *** notably large corporations and those entities that can best afford to make patents a sport of kings at the same time of reducing the power of patents and making infringement more and more a viable option with low penalty will game the system to their advantage, and exactly like the coinage of the term “Troll,” this is not done for the benefit of the public, no matter how much spin and propaganda is pumped out.

    1. anon, how reliable are these archives? Who controls them? The indexer? And who is the defendant in this case? An indexer?

      Here the post was authenticated by the testimony of its author. Otherwise, I think the real objection to this kind of evidence is its unreliability.

      1. Had the same thoughts Ned.

        Without such author authentication, such a post would not — and could not — reasonably and fairly be considered reliable evidence.

        The Internet is replete with date-inaccurate, content-modified “information.” It should not be taken at face-value.

        A better title post would be something like:

        “Author Authenticated UseNet is Prior Art”

  3. I used Usenet in the mid-1990’s. It could have been done assuming you had access to Usenet and the archives, but it would have taken a long time. As I remember it, though, you could do key word searches on the archives.

  4. As to the defenses against future patents that will issue from AIA-subject applications, it will no longer be necessary to rely on these broad case law stretches to cover modern communications of the old 102 words “printed publication.” [Nor to be able to "swear behind" them, if they are not by or from an inventor.] Because of the AIA 102 addition of: “..or otherwise available to the public before the effective filing date of the claimed invention.”

        1. Yeah, Steve, “to the public” cannot include, for example, to someone in Nazi Germany during WWII. Such would not be available to the American Public.

          To the public cannot include known to a witch doctor practicing in a remote tribe not yet discovered.

          To the public cannot include a discovery made by someone who never makes it back to civilization from some remote site.

          1. But to the publics would include a locally indexed copy “published” is Swahili and located in the public library of the island nation of Quatsnatabaland.

            And yes, post AIA, this too is open for obviousness analysis.

            (This Easter egg curtesy of the Big Corp providers of the AIA)

    1. Paul, is there any support in the record that “available” is not intended to change the law? Are confidential disclosures “available” because anyone can sign one?

        1. I see you continue to make comments that are low in quality, and beneath the standards of professionalism of the patent community.

          1. And I see that you continue to post in error Grumpy Cat, only seeking to validate the wrong conclusions to which my posts highlight as being wrong.

            You continue to misunderstand which end is up, and what exactly is the low quality, what exactly is professional. You mistake the pointing out of low quality and lack of professionalism most likely because you yourself believe in those views that are themselves low quality and lack professionalism.

            Your continued error in this manner, without being able to use ANY indicators of substantive law or facts in your posts, and relying (not in-coincidentally) on the SAME TYPE of low quality and lack of professional tactic of “policy”/opinion only table pounding proves that I am correct.

            You need to up your game my friend. You seem to not be able to understand that you are not only supplying your own rope, not only making the knot yourself, but that you are only too willingly putting your head into the noose and jumping off the chair.

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