In Re Enhanced Security Research, LLC
739 F.3d 1347
| Fed. Cir. | 2014Background
- The '236 patent claims an intelligent network security device (INSD) and method that monitors LAN communications in real time, assigns weights to suspected breaches, and controls a firewall to block communications based on those weights.
- NetStalker (user manual) and Liepins (scholarly article describing a weighted rule-based anomaly detector, W&S) were submitted as prior art during ex parte reexamination; Liepins' status as prior art was undisputed, NetStalker’s was contested.
- PTO examiner rejected amended claims 1–5 and 7–19 as obvious in view of NetStalker combined with Liepins; the Board affirmed.
- ESR argued NetStalker was not a printed publication (and that the submitted manual was incomplete/draft) and that ESR conceived the invention earlier and exercised diligence in reduction to practice.
- The Federal Circuit affirmed: (1) substantial evidence supports that NetStalker was publicly available; (2) combination of NetStalker and Liepins renders the claimed features obvious; and (3) ESR failed to show requisite attorney diligence to antedate NetStalker.
Issues
| Issue | Plaintiff's Argument (ESR) | Defendant's Argument (PTO/Board) | Held |
|---|---|---|---|
| Obviousness of claims in view of NetStalker + Liepins | NetStalker + Liepins do not disclose automatically assigning weights and blocking based on those weights | NetStalker discloses user-defined severity, automatic blocking (“Shun”) and thresholds; Liepins supplies automated weighted-rule framework; combination teaches claimed elements | Affirmed — combination renders claims obvious (substantial evidence supports Board) |
| Is NetStalker a "printed publication" / publicly accessible prior art | Manual was a draft, incomplete, missing pages, and not publicly distributed as of May 1996 | CEO declaration and contemporaneous advertising/sales evidence show the Manual (version) was available on request and product was marketed/sold before critical date | Affirmed — substantial evidence supports public availability under §102(a)(1) |
| Reliance on an incomplete/manual with missing pages (teaching away / completeness) | Missing pages might teach away or change meaning; requester controlled the document so PTO should not rely on incomplete reference | PTO regulations and MPEP permit submission of pertinent parts; examiner found missing pages not necessary to understand relied-upon sections | Affirmed — missing pages were not shown to alter the relied-upon disclosures; PTO properly considered the partial manual |
| Diligence to antedate NetStalker (prior conception + reduction to practice) | ESR submitted inventor and attorney declarations (Shipley, Saunders) showing conception before May 1996 and ongoing work toward filing | Board found attorney records did not demonstrate continuous, specific attorney diligence during critical period (May–Oct 1996) | Affirmed — substantial evidence supports Board's finding ESR failed to prove requisite diligence under 37 C.F.R. §1.131 |
Key Cases Cited
- Graham v. John Deere Co., 383 U.S. 1 (establishes legal framework for obviousness inquiries)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (explains obviousness and ‘‘obvious to try’’ / need for reason to combine)
- In re Hall, 781 F.2d 897 (public accessibility standard for printed publications)
- Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (prior art must be considered as a whole; cannot pick bits selectively)
- In re Baxter Int’l, Inc., 678 F.3d 1357 (review standards: de novo law, substantial-evidence facts)
- In re Lovin, 652 F.3d 1349 (briefing requirements in ex parte appeals; waiver for unargued claim limitations)
- Bey v. Kollonitsch, 806 F.2d 1024 (attorney-diligence standard and evidence expectations)
- In re NTP, Inc., 654 F.3d 1279 (patentee’s burden to challenge authenticity/accessibility of a document)
- Mathews v. Eldridge, 424 U.S. 319 (due-process balancing framework)
- SEC v. Chenery Corp., 332 U.S. 194 (review limited to agency’s stated grounds)
- In re Applied Materials, Inc., 692 F.3d 1289 (review must be on Board’s actual reasoning)