Voter Verified Decision Elaborates on Internet Publication

Yesterday a panel of Judges (Lourie, Reyna and Wallach) in Voter Verified, Inc. v. Premier Election Solutions, Appeal nos. 2011-1559, 2012-1016 (Fed. Cir. November 5, 2012) expanded on the Fed. Cir.’s earlier decision In re Lister, 583 F.3d 1307 (Fed. Cir. 2009)(archived under “Prior Art”), which in turn cited In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), to affirm a district court’s holding that a patent on “a self-verifying voting system” was obvious in view of an article (the “Benson article”) that had been posted on the “Risks Digest Website” well prior to the 102(b) bar date.

Noting that the “key inquiry is whether the reference was made ‘sufficiently available to the public interested in the art’ before the critical date”, Klopfenstein was quoted as establishing that “Whether a reference is publicly available is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to member of the public.”

While Voter Verified had argued both that web-based references like the Benson article must be searchable by pertinent terms over the internet, and that there was no evidence of any indexing on any database that would have allowed the interested public to locate the Risks Digest Website, the panel rejected these “standards” and accepted Defendants’ arguments that the “Benson article was posted on a public website well known to those interested in the arts of voting technologies… and could be retrieved from that website by searching [at the website] based on subject matter.” The panel also gave weight to the fact that “users can freely and easily copy Risks Digest content.” It remains somewhat unclear, however, what weight the panel would have given a factual finding that the full article was available only via a paid-up subscription or by paying a one-time fee, facts not in issue. The answer is probably, “Not much.”

What is, and is not prior art in the information age can yield tricky questions. Please go back and read In re Lister – there is a link to it in my 2009 post. And read In re Hall, 781 F.2d 897 (Fed. Cir. 1986) and In re Bayer, 568 F.2d 1357 (CCPA 1978). For example, it is fine to use a thesis defense date as a filing “safety deadline”, but the critical date is not the date of the thesis defense – but rather when the thesis reaches the library and is indexed by library personnel. Of course, this can be a difficult date to determine with precision. There is language in Lister suggesting that a slide show and other transient disclosures are not “printed publications.”

Tech transfer personnel, particularly those plagued by early publication, should ask outside counsel to give them periodic refresher courses on the effect of a public disclosure by third parties or by their inventors, particularly in view of the AIA bars and grace periods in 102, which will soon control. The novelty defeating disclosure is a description in a “printed publication… or otherwise available to the public.” However, the exceptions under 102 (b) are for “disclosures.” The law around “printed publication” has become almost settled, but I am not so sure how the law will define “otherwise available” publications, or what degree of gloss “public disclosure” will receive.

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