by Dennis Crouch
The 1836 Patent Act added the caveat that no patent should issue on an invention previously “described in any printed publication.” That language has carried through the various major patent law overhauls and continues as a prominent aspect of 35 U.S.C. 102(a)(1).
A person shall be entitled to a patent unless (1) the claimed invention 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 …
The Supreme Court has interpreted the scope of the phrase in dozens of patent cases over the past 180 years, but questions remain. A new petition asks the court to examine the phrase again and help define when a document crosses the publication threshold. In particular, the petition asks whether documents made available only to customers, and not generally to the public, count as being published. Centripetal Networks, Inc. v. Cisco Systems, Inc., No. 21-193 (Supreme Court 2021).
Can a document qualify as a printed publication if it is stored on a password-protected website, not accessible to the public, and available only to customers who pay over $25,000 dollars to purchase related software?
[Read the Petition here]. In its decision, the Federal Circuit found the documents at issue to be a printed publication. The court relied upon additional facts not found in the question presented–noting that the document in question was distributed to hundreds of customers over a span of years and without any confidentiality restrictions; and that product advertisements were designed to attract persons of skill in the art. On balance, the Federal Circuit found the document “sufficiently disseminated” to count as a publication.
Here, the Board found, based on testimony from a Sourcefire company employee, that each of the 586 customers who purchased a range of Sourcefire products over a relevant two-year period received a CD-ROM containing the user guide, which explicitly stated that users were permitted to “use, print out, save on a retrieval system, and otherwise copy and distribute” the reference for noncommercial use. Further, Centripetal presented no evidence to the Board showing that—despite the CD-ROM distribution— an interested person using reasonable diligence would not have been able to access Sourcefire either by purchasing the product or by receiving a copy of the user guide from another customer. Substantial evidence, including advertisements, reviews, and testimony from a Sourcefire company employee, supports the Board’s finding that those interested and of skill in the art actually purchased Sourcefire. In sum, the large number of Sourcefire product customers, the number of years the product was available, the advertisements targeting those interested and of skill in the art, and the lack of confidentiality restrictions on copying or distributing Sourcefire support a finding of public accessibility.
Centripetal Networks, Inc. v. Cisco Sys., Inc., 847 Fed. Appx. 869, 877 (Fed. Cir. 2021)(nonprecedential opinion).
The case offers a theoretical question — what price is too high before a document no longer counts as a printed publication. It is not really publicly available if the sales price is $1 billion. On the other hand, in this case the price was $25,000 (an amount that some folks paid).