CAFC discusses "what is" prior art; attorney diligence in IN RE ENHANCED SECURITY RESEARCH
With respect to obviousness, the critical issue is whether the Manual in combination with Liepins teaches a person of ordinary skill in the art how to assess the severity of an attempted security breach and then block that attempted breach based on its severity. (For the purposes of this discussion, we assume that the Manual constitutes valid prior art. This assumption is discussed in Section II.)
As to arguing dependent claims before the Board
Finally, ESR argues that the Board “failed to address the limitations contained in dependent claims 9, 15, and 17.” Appellant’s Br. at 47. As the PTO points out on appeal, ESR waived this argument when it failed to separately argue these claims. As this court explained in In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011), the Board may reasonably interpret 37 C.F.R § 41.37, the rule governing the briefing requirements in ex parte appeals, “to require applicants to articulate more substantive arguments if they wish for individual claims to be treated separately.” Id. at 1356. ESR asserts that it separately argued claims 9, 15, and 17 when it quoted the claims in its appeal brief and stated that these limitations did not appear in the prior art. Lovin specifically held that this type of argument was insufficient, stating that “a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art” is insufficient under Rule 41.37. Id. at 1357.
Here, ESR did not argue the dependent claims under separate subheadings as Rule 41.37 (2012)7 required. Instead, ESR grouped the dependent claims with their independent claims.
As to "what constitutes prior art"
We have so far proceeded on the assumption that NetStalker constitutes a valid prior art reference. Howev- er, ESR contends that the Board erred in treating the Manual as prior art. Whether a document qualifies as a “printed publication” that is “available to the public” for the purposes of 35 U.S.C. § 102(a)(1) is a question of law based on underlying findings of fact. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). Under 35 U.S.C. § 102(a)(1), prior art encompasses any matter that “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.” This court has interpreted § 102 broadly, explaining that even relatively obscure documents qualify as prior art so long as the public has a means of accessing them. See, e.g., Hall, 781 F.2d at 899.
Our leading case on public accessibility is In re Hall, 781 F.2d 897 (Fed. Cir. 1986). In Hall we concluded that “a single cataloged thesis in one university library” consti- tutes “sufficient accessibility to those interested in the art exercising reasonable diligence.” Id. at 900. Thereafter, in Constant v. Advanced Micro-Devices, Inc., we explained that “[a]ccessibility goes to the issue of whether interested members of the relevant public could obtain the infor- mation if they wanted to.” 848 F.2d 1560, 1569 (Fed. Cir. 1988). Therefore, “[i]f accessibility is proved, there is no requirement to show that particular members of the public actually received the information.” Id.
In this case, the title page of the Manual contains an inscription dating it to May 1996. ESR, however, chal- lenges the Manual’s claimed date of priority, arguing that the version of the Manual that the examiner relied on may not have been available in May 1996 and that there are indications that this version was a draft rather than a final document available to the public. However, Stephen Smaha, the Chief Executive Officer of the company that produces the NetStalker software, filed a declaration (“Smaha Declaration”) with the PTO averring that the version of the Manual before the examiner was available in May 1996. Smaha explained that “[m]embers of the public showing an interest in buying or licensing the NetStalker product could have obtained a copy of the manual by contacting Haystack or Network Systems Corporation and requesting one,” and, indeed, “[t]he NetStalker product was sold to or installed for approxi- mately a dozen customers.” JA 9705 (footnote omitted). In view of the Manual’s inscription date, the Smaha Declara- tion, and evidence of NetStalker advertisements pub- lished in 1995, we conclude that substantial evidence supports the Board’s finding that the Manual constituted publically-available prior art under § 102(a)(1).
ESR also argues that the Manual should not be con- sidered in the circumstances of this case because it was missing pages. To support this proposition, ESR relies on Panduit Corp. v. Dennison Manufacturing Co., wherein this court explained that prior art “must be considered in its entirety, i.e., as a whole, including portions that would lead away from the invention in suit.” 810 F.2d 1561, 1568 (Fed. Cir. 1987). ESR contends that because the Manual was missing pages, it “cannot be considered as a whole” and therefore “should not be considered at all.” Appellant’s Br. at 26. (...)
We agree that missing pages may sometimes be nec- essary for understanding a prior art reference. But noth- ing in the Manual here suggests that the missing pages were necessary to an understanding of the pertinent parts of the reference. (...)
ESR claims that the missing sections were necessary because they could: “(1) clarify the often cryptic disclosure in the NetStalker Manual and thus alter its meaning; or (2) disparage or teach away from application of the relied upon teachings to the ʼ236 invention.” Appellant’s Br. at 29. However, ESR fails to point to anything in the Manual that might support this conclusion.
Footnote 14 states
Had the missing pages been necessary to a full understanding of the software, the examiner, of course, could not have relied on the Manual without securing the missing pages. In Star Fruits S.N.C. v. United States, 393 F.3d 1277 (Fed. Cir. 2005), we held that the examiner could request further information from the applicant, and 37 C.F.R. § 1.156, see supra note 8, permits requests to others associated with the applicant. However, the rele- vant regulations do not provide a mechanism through which the PTO may request further information from a third party. This is clear from the history of the America Invents Act’s new Third Party Preissuance Submission procedure, codified at 35 U.S.C. § 122(e).
As to diligence
Finally, ESR argues that even if the ’236 patent would have been obvious in light of NetStalker and Liepins, NetStalker should not be considered invalidating prior art because ESR conceived of the invention before the publi- cation of the NetStalker Manual, and was diligent in reducing it to practice. The Manual contains an inscrip- tion that dates it to May 1996, and the ’236 patent is a continuation in part of an application filed on October 7, 1996. Even if ESR had established a conception date before May 1996 (earlier than the publication date of the Manual), we find no error in the Board’s decision that there was no showing of diligence in reducing the inven- tion to practice. (...)
A party may prove due dili- gence by showing his attorney’s efforts to achieve a con- structive reduction to practice. Bey v. Kollonitsch, 806 F.2d 1024, 1026 (Fed. Cir. 1986).
In order to establish attorney diligence, ESR submit- ted declarations from Peter M. Shipley, the inventor of the ’236 patent (“Shipley Declaration”), and F. Eric Saun- ders, the attorney who filed the ’236 patent application (“Saunders Declaration”). In their declarations, Saunders and Shipley described meetings and telephone calls that took place from February 28, 1996 (when Shipley and Saunders first met in person) to October 7, 1996 (when the patent application of which the ’236 patent is a con- tinuation was filed). ESR argues that these declarations demonstrate the requisite attorney diligence during the critical period. (...)
In this case, the critical period in which ESR must demonstrate diligence spans from May 1996, when the relevant version of the Manual became available, to October 7, 1996, when Saunders filed Shipley’s patent application. The record reveals that over the course of five months, Saunders had a few conversations with Shipley, conducted a prior art search, billed for under 30 hours of work, and drafted the patent application. Citing Bey’s emphasis on the importance of supplying specific dates of activity when attempting to establish diligence, the Board found that, apart from records showing work on “May 4, 6, and 20, and activity in July,” JA 13, ESR failed to provide “records or other evidence showing the exact days when activity specific to this application occurred.” JA 13.
In sum, we hold that the examiner and Board proper- ly treated the NetStalker Manual as publically-available prior art and, having done so, correctly concluded that the teachings of the Manual and Liepins render the amend- ed ’236 patent claims at issue obvious under 35 U.S.C. § 103. We further hold that ESR has failed to demonstrate the requisite attorney diligence under Rule 131, and, therefore, the ’236 patent does not predate the publication date of the Manual.
Judge O’MALLEY dissented. The issue of proving a negative arose:
While Smaha submitted a declaration in support of the reference, he neither claimed that a more complete refer- ence existed—at any time—explained why the reference was submitted in its incomplete state, or explained what the missing portions discussed. The government asserts no positive theory allowing it to rely on such a reference, arguing simply that it was ESR’s burden to prove a nega- tive—i.e., that the pages of the manual to which it has been denied access teach away from or undercut the teachings in the pages Smaha and the requestor selective- ly chose to provide to the Patent and Trademark Office (“PTO”). The government is mistaken, as is the majority. The PTO should have refused to rely on the NetStalker manual as a reference, and should have refused to insti- gate or maintain a reexamination on such grounds. (...)
The Smaha declaration was telling more for what it failed to state than for what little it actually did say with regard to accessibility. Given his undisputed bias, the Board and majority should demand precision with respect to such important facts, and not rely on what appeared to be half-truths. If the manual really was publicly accessible as of the critical date, it would not have been difficult for Smaha to actually say so, and to support his statements with verifiable facts.