What is a Printed Publication for Prior Art Purposes?

By Joseph Herndon —

Patent owner Acceleration Bay, LLC ("Acceleration") appealed the final written decisions of the Patent Trial and Appeal Board holding unpatentable claims of U.S. Patent Nos. 6,829,634; 6,701,344; and 6,714,966.  Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2k Sports, Inc., and Rockstar Games, Inc. (collectively, "Blizzard") cross-appealed portions of the Board's decisions holding that the Lin article is not a printed publication under 35 U.S.C. § 102(a), among other issues.

Here, we look at the determination of features in a "preamble" as being limitations of the claim, as well as, requirements of an article being considered a printed publication for prior art purposes.

The patents at issue are directed to a broadcast technique in which a broadcast channel overlays a point-to-point communications network.  The communications network consists of a graph of point-to-point connections between host computers or "nodes," through which the broadcast channel is implemented.

Blizzard filed six inter partes review ("IPR") petitions—two for each of the '344, '966, and '634 patents—based principally on two different prior art references:  one set of IPRs challenged claims based on the Shoubridge article alone or combined with a prior art book Direct-Play ("Shoubridge IPRs"), and another set of IPRs challenged claims based on the Lin article alone or combined with DirectPlay ("Lin IPRs").

The Board instituted an IPR on each petition, on many of the grounds and claims raised, and rendered six final decisions.  In the Shoubridge IPRs, the Board determined many claims to be unpatentable, and in the Lin IPRs, the Board concluded that Lin is not a printed publication under 35 U.S.C. § 102(a) and thus determined Blizzard failed to show the challenged claims are unpatentable over Lin.

Shoubridge IPRs

Acceleration appealed portions of the Board's decisions in the Shoubridge IPRs.  Claim 1 of the '966 patent is representative of the claim construction disputes in Acceleration's appeal (emphases added):

1.  A computer network for providing an information delivery service for a plurality of participants, each participant having connections to at least three neighbor participants, wherein an originating participant sends data to the other participants by sending the data through each of its connections to its neighbor participants and wherein each participant sends data that it receives from a neighbor participant to its other neighbor participants, further wherein the network is m-regular, where m is the exact number of neighbor participants of each participant and further wherein the number of participants is at least two greater than m thus resulting in a non-complete graph.

Claim 1 of the '344 patent is very similar and begins "1. A computer network for providing a game environment for a plurality of participants, …".

Acceleration argued that the terms "game environment" and "information delivery service," appearing in the '344 and '966 patents, respectively, should have been given patentable weight despite appearing in the preambles because they provide structure for the remainder of the claims.  Acceleration alternatively argues that these terms appear in the body of the claims because there is no transition phrase denoting a preamble.

Regarding the latter argument, the Federal Circuit responded that Acceleration's poor claim drafting will not be an excuse for it to infuse confusion into its claim scope, and simply concluded that "game environment" and "information delivery service" are part of the preamble of the claims.

The Federal Circuit noted that there is no beneficial purpose to be served by failing to include a transition word in a claim to clearly delineate the claim's preamble from the body, and it "caution[ed] patentees against doing so."

Then, because the terms at issue appear in preambles, it must be determined whether the terms are limitations.  General case law indicates that a preamble limits the invention if it recites essential structure or steps, or is necessary to give life, meaning, and vitality to the claim.

The Federal Circuit agreed with the Board that the claim terms "game environment" and "information delivery service" are non-limiting because they merely describe intended uses for what is otherwise a structurally complete invention.  They do not impart any structure into or serve as antecedents for the claims at issue.  Instead, they simply provide an intended use for what is otherwise a claim for a network.

Lin IPRs

Blizzard cross-appealed many portions of the Board's decisions in the Lin IPRs, and here we only discuss the issue of whether Lin is a printed publication under § 102(a).

Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings.  One such fact question is public accessibility.  Because there are many ways in which a reference may be disseminated to the interested public, public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication.

Case law has indicated that a reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.

The Board found that Lin was not publicly accessible before the critical date.

Based on the testimony of Glenn Little, a Systems Administrator at the Computer Science and Engineering ("CSE") department of the University of California, San Diego ("UCSD"), the Board found that Lin had been uploaded to the CSE Technical Reports Library's website as of November 23, 1999, which is not challenged on appeal.  As the Board explained, according to Mr. Little, "the CSE department regularly maintains electronic technical reports and records concerning those reports, and a staff member assigns a unique identifier to each report based on the year it was uploaded and the relative order it was uploaded in comparison to other papers."

The Board then noted that public accessibility requires more than technical accessibility.  Because there was no evidence that Lin was disseminated to the public, the Board focused on whether an interested skilled artisan, using reasonable diligence, would have found Lin on the CSE Technical Reports Library website.  The Board found that despite some indexing and search functionality on the website, Lin was not publicly accessible.  It found the website allowed a user to view a list of technical reports indexed only by author or year and that there was no evidence as to how many reports were in the Library's database in 1999.  The Board determined that at best, Blizzard's evidence suggests that an artisan might have located Lin by skimming through potentially hundreds of titles in the same year, with most containing unrelated subject matter, or by viewing all titles in the database listed by author, when the authors were not particularly well known.  The Board also found the website's advanced search form to be deficient.  It found that while the advanced search form appeared to allow a user to search keywords for author, title, and abstract fields, evidence demonstrated that functionality was not reliable.  In sum, the Board determined that Blizzard had not shown sufficiently that the UCSD CSE Technical Reports Library was searchable or indexed in a meaningful way so that a person of ordinary skill in the art would have located Lin.  The Board, therefore, concluded Lin is not a printed publication under § 102(a).

The Federal Circuit found no error in the Board's reasoning.  Namely, the Federal Circuit found that substantial evidence supports the Board's findings that Lin was not publicly accessible, including that Lin was not indexed in a meaningful way and that the website's advanced search form was deficient.  Mr. Little testified he does not know how the search works or how keywords are generated, that he never searched for Lin using the advanced search form, and that it was not the CSE department's practice to verify the advanced search capability for title and abstract when a new article was uploaded.  Mr. Little also admitted it was possible the search function did not work.

Acceleration also presented evidence that a recent advanced search for keywords in the title and abstract of Lin failed to produce any results.

Blizzard argued these results are unauthenticated hearsay and are based on searches conducted years after the critical date, but Mr. Little testified that as to the website, "[i]t's pretty much the same, actually, between [1999] and now.  We're running the same software."  The Federal Circuit found no reason to discount the Board's weighing of the evidence.  Substantial evidence was thus found to support the Board's finding that there was insufficient evidence of record to support a finding that a person of ordinary skill in the art in 1999 could have located Lin using the CSE Library website's search function.

The Federal Circuit thus distinguished a similar case:  In re Lister, 583 F.3d 1307 (Fed. Cir. 2009).  In Lister, a reasonably diligent researcher with access to a database that permits the searching of titles by keyword would be able to attempt several searches using a variety of keyword combinations, and thus, the manuscript at issue was publicly accessible as of the date it was included in databases that permitted keyword searching of titles.

The Federal Circuit noted that unlike in Lister, here the record supports the Board's finding that the CSE Library website's advanced search function did not successfully permit keyword searching of titles, a key feature in Lister.  The Board's fact finding that, with available reports indexed only by author or year, Lin was not meaningfully indexed, was found to be supported by substantial evidence.

Blizzard argued that because Lin was indexed by title for a given year, author name, and unique sequence number, that was sufficient for public accessibility.  But, the Federal Circuit stated that the test for public accessibility is not "has the reference been indexed?"  Where indexing is concerned, whether online or in tangible media, the ultimate question has been whether the reference was available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.

Here, the Board found that although Lin was indexed by author and year, it was not meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it, which is a proper consideration under the Federal Circuit precedent.  As such, the Federal Circuit found that Lin was not a printed publication under § 102.

Acceleration Bay, LLC v. Activision Blizzard Inc. (Fed. Cir. 2018)
Panel: Chief Judge Prost and Circuit Judges Moore and Reyna
Opinion by Circuit Judge Moore