Suffolk Technologies, LLC v. Aol Inc.
752 F.3d 1358
| Fed. Cir. | 2014Background
- Suffolk Technologies owns the ’835 patent directed to controlling a file server that serves files to web browsers.
- Claims at issue are independent claim 1 and dependent claims 6, 7, and 9; district court held claims 1, 7, and 9 invalid as anticipated by a 1995 Usenet post, and Suffolk stipulated claim 6 was anticipated as well.
- The asserted anticipation is based on a post by Marshall C. Yount and a response by Shishir Gundavaram discussing the HTTP_REFERER environment variable.
- Claim 1 requires receiving a request, determining and comparing a received identification signal, and deciding which file to supply; claim 6 adds generating the supplied file; claims 7 and 9 depend on the same framework with publication during internet use.
- The district court construed "generating said supplied file" as depending on the received identification signal, not the content of the requesting web page, and Suffolk challenged this construction.
- The district court also held the Post to be a printed publication under 35 U.S.C. § 102 and granted summary judgment of invalidity; Suffolk appealed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim construction of generating said supplied file | Suffolk argues generation can depend on the page content, not only the identification signal. | Google argues generation rests on the identification signal as construed by the district court. | Affirmed district court construction. |
| Post as a printed publication under § 102 | Post should not be a printed publication due to audience and accessibility issues. | Post was publicly accessible to ordinary skilled readers via Usenet discussion. | Affirmed Post as a printed publication. |
| Post's accuracy and reliability issues | Questions about alterations and reliability warrant jury consideration. | No affirmative evidence undermines Post's material facts; authenticity established. | Summary judgment not defeated; evidence insufficient to create triable issues. |
| Exclusion of Suffolk's validity expert testimony | District court abused discretion in excluding new opinion on anticipation of claim 1. | Exclusion appropriate because opinion changed after claim construction and was not tethered to the record. | District court did not abuse discretion; exclusion affirmed. |
| Overall propriety of granting summary judgment | There are genuine issues of material fact about the Post disclosures and claim scope. | Google met its burden to show no genuine issues of material fact; Suffolk’s attorney arguments are insufficient. | Summary judgment of invalidity affirmed. |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction based on intrinsic evidence with possible extrinsic guidance)
- SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed. Cir. 2008) (public accessibility and printed publication test for § 102)
- In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (public accessibility of reference under § 102 governs printed publication analysis)
- Massachusetts Inst. of Tech. v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985) (dissemination at a conference can constitute printed publication)
- Grober v. Mako Prods., Inc., 686 F.3d 1335 (Fed. Cir. 2012) (summary judgment standard on material facts)
- Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006) (evidentiary standards for summary judgment)
- In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) (public accessibility considerations for printed publications)