Friday, June 17, 2011

Stamps case revisits In re Klopfenstein: webpage as prior art?

The nonprecedential case of Stamps v. Endicia covers a lot of ground,
but its treatment of a webpage as prior art (with a dissent by Bryson)
is informative. The issue of webpages as prior art is likely to be

The CAFC noted:

A prior art reference cannot
constitute a “printed publication” under §102(b) if it has
not been made “publicly accessible.” In re Klopfenstein,
380 F.3d 1345, 1348 (Fed. Cir. 2004). That inquiry fo-
cuses on the reference’s accessibility to the “public inter-
ested in the art.” Id. contends that the
Tygar-Yee article should not have been treated as § 102(b)
prior art because it was not publicly accessible.

We hold that the Tygar-Yee article was publicly ac-
cessible. The Tygar-Yee article, dated March 1, 1993, was
written by Tygar and Yee and is entitled “Cryptography:
It’s Not Just for Electronic Mail Anymore.” J.A. 6416–39
(emphasis in original). This article was sponsored by the
United States Air Force, a Presidential Young Investiga-
tor Award, and Motorola, Inc. In an expert declaration
submitted by Tygar in this case, he listed the Tygar-Yee
article as prior art, J.A. 7951, and stated that he under-
stood that “prior art consist[s] of publications . . . dated
before the invention or more than one year before the
filing of the patent application,” J.A. 7961. Other evi-
dence confirmed the public availability of the article. For
example, the article was catalogued by Carnegie Mellon
University and listed as available on its indexed website
in 1993 as “” This document was
listed as “last modified” on May 8, 1993. J.A. 10964.
Significantly, that date is several weeks after the date
appearing in the article itself, suggesting that the website
was not simply parroting the date appearing in the arti-
cle. Moreover, Carnegie Mellon's website is a public
forum where leaders in the field of computer science and
other related fields certainly would have had access to the
Tygar-Yee article. The paper was additionally cited in a
second paper presented by Tygar and Yee in 1994, and itself identified the Tygar-Yee article as
bearing a 1993 date in an information disclosure state-
ment filed in connection with another patent that is currently not in suit. did not submit any evidence to rebut the
evidence that this paper was published in 1993. Thus, no
genuine issues of material fact remain as to whether the
article was publicly available more than one year prior to
the filing dates of the ’991 patent (October 2, 1996) and
the ’777 patent (July 15, 1998). The district court did not
err in treating the Tygar-Yee article as § 102(b) prior art.

On secondary considerations:

However, did not
demonstrate the requisite “nexus between the merits of
the claimed invention” and the “evidence of secondary
considerations.” Muniauction, Inc. v. Thomson Corp., 532
F.3d 1318, 1327 (Fed. Cir. 2008) (quoting Ruiz v. A.B.
Chance Co., 234 F.3d 654, 668 (Fed. Cir. 2000)); see also
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (holding
that the patentee’s proof must show “that the sales were a
direct result of the unique characteristics of the claimed
invention”). Given the strong showing of obviousness, we
find that the evidence of secondary considerations was
inadequate to overcome the legal conclusion that the
contested claims would have been obvious. See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).

Section 102:

Section 102(a) provides that a
person is not entitled to a patent if “the invention was . . .
patented . . . in this or a foreign country, before the inven-
tion thereof by the applicant for patent.” 35 U.S.C. §
102(a). Section 102(g) contains the basic rule for deter-
mining priority. Id. § 102(g); Mahurkar v. C.R. Bard,
Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996).


Priority of invention
“goes to the first party to reduce an invention to practice
unless the other party can show that it was the first to
conceive the invention and that it exercised reasonable
diligence in later reducing that invention to practice.”
Mahurkar, 79 F.3d at 1577. A showing that a patent was
conceived at an earlier date and reduced to practice with
reasonable diligence is called an effort to swear behind an
earlier patent. See, e.g., Honeywell Inc. v. Victor Co. of
Japan, Ltd., 298 F.3d 1317, 1327 (Fed. Cir. 2002).

Of conception of an invention:

At issue then is the ’777 patent’s date of conception.
Conception is the formation, in the mind of the inventor,
of “a definite and permanent idea of the complete and
operative invention . . . . The idea must be ‘so clearly
defined in the inventor’s mind that only ordinary skill
would be necessary to reduce the invention to practice,
without extensive research or experimentation.’” Mahur-
kar, 79 F.3d at 1577 (quoting Burroughs Wellcome Co. v.
Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994)).

Clear and convincing evidence:

Accordingly, the burden of proof in
interference actions is the lower preponderance of evi-
dence standard, and the burden is generally assigned to
the junior party (the party that entered the interference
action with a later filing date). See 37 C.F.R. § 1.657. In
contrast, a party asserting invalidity in a district court
always bears the burden of proof by clear and convincing
evidence. Innovative Scuba Concepts, Inc. v. Feder Indus.,
Inc., 26 F.3d 1112, 1115 (Fed. Cir. 1994).

Corroborating evidence:

Nonetheless, an inventor, such as Pagel, claiming prior
conception must proffer evidence corroborating his testi-
mony. See Mahurkar, 79 F.3d at 1577. “This require-
ment arose out of a concern that inventors testifying in
patent infringement cases would be tempted to remember
facts favorable to their case by the lure of protecting their
patent or defeating another's patent.” Id.; see also Eibel
Process Co. v. Minn. & Ontario Paper Co., 261 U.S. 45, 60
(1923); Washburn & Moen Mfg. Co. v. Beat ‘Em All
Barbed-Wire Co., 143 U.S. 275, 284–85 (1892); Gasser
Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 776
(Fed. Cir. 1995). The requirement for the corroboration of
inventor testimony applies to efforts to swear behind a
prior art reference. See, e.g., Mahurkar, 79 F.3d at 1577.

Here, of the evidence:

The March
Status Report makes only opaque and incomprehensible
references to a “button array” and “iButton.” These
references hardly show that the conception for the ’777
patent was “so clearly defined . . . that only ordinary skill
would be necessary to reduce the invention to practice.”
See Mahurkar, 79 F.3d at 1577. Indeed, Tygar’s expert
testimony demonstrates that one of skill in the art would
not have comprehended the status report:
[The March Status Report] is written in a way
that prevents a person of ordinary skill in the art
from knowing the particular subject matter to
which it relates; its cursory language renders
much of [the status report] unintelligible. I could
not identify any portion of [the status report] that
a person of ordinary skill in the art of computer
science would recognize as a clear reference to the
particular invention covered in the claims of the
’777 patent, let alone a complete disclosure of that

Opportunity to respond:

Because these declarations were raised for the first
time in a reply brief to which Endicia did not have an
opportunity to respond, we hold that the district court
acted within its discretion when it did not consider these
supplementary declarations. See In re Cygnus Tele-
comms. Tech., LLC, Patent Litig., 536 F.3d 1343, 1351–53
(Fed. Cir. 2008) (applying regional circuit law in deciding
the admissibility of evidence that was not included in
motions for summary judgment); Merrick v. Paul Revere
Life Ins. Co., 500 F.3d 1007, 1013 (Fed. Cir. 2007) (hold-
ing that issues raised for the first time in a reply brief are
generally considered waived, but making an exception
where appellee was given an opportunity to respond);
Zamani v. Carnes, 491 F.3d 990, 997 (9th Cir. 2007)
(holding that a district court “need not consider argu-
ments raised for the first time in a reply brief”).

Blackboard is cited:

In Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d
1371, 1382 (Fed. Cir. 2009), we held that, “if one employs
means-plus-function language in a claim, one must set
forth in the specification an adequate disclosure showing
what is meant by that language.” (citation and quotation
omitted); see 35 U.S.C. § 112, ¶ 2. “If the specification
does not contain an adequate disclosure of the structure
that corresponds to the claimed function, the patentee
will have ‘failed to particularly point out and distinctly
claim the invention as required by the second paragraph
of section 112,’ which renders the claim invalid for indefi-
niteness.” Blackboard, 574 F.3d at 1382 (quoting In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc)).


In Aristocrat Technologies Australia Pty Ltd. v. Inter-
national Game Technology, 521 F.3d 1328, 1333 (Fed. Cir.
2008), we held that a “computer-implemented means-
plus-function term is limited to the corresponding struc-
ture disclosed in the specification and equivalents thereof,
and the corresponding structure is the algorithm.” (quot-
ing Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253
(Fed. Cir. 2005)). In a means-plus-function claim in
which the disclosed structure is a computer, “the disclosed
structure is not the general purpose computer, but rather
the special purpose computer programmed to perform the
disclosed algorithm.” WMS Gaming, Inc. v. Int’l Game
Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).


We must determine whether a skilled
artisan would have understood the specification to en-
compass the necessary program and could have imple-
mented the program—not simply whether he could have
written the program. See Med. Instrumentation & Diag-
nostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir.
2003). “It is not proper to look to the knowledge of one of
skill in the art apart from and unconnected to the disclosure
of the patent.” Id.

Conclusory opinions:

These conclusory
opinions fail to raise a genuine issue of fact. See Innoge-
netics N.V. v. Abbott Labs., 512 F.3d 1363, 1373–74 (Fed.
Cir. 2008) (finding an expert report insufficient to raise a
genuine issue of fact where the expert “merely lists a
number of prior art references and then concludes with
the stock phrase ‘to one skilled in the art it would have
been obvious to perform [the claimed methods]’”).

ALSO, footnote 6: We conclude that McDaniel’s
conclusory opinion fails to raise a genuine issue of mate-
rial fact. See Innogenetics N.V. v. Abbott Labs., 512 F.3d1363,
1373–74 (Fed. Cir. 2008).


Because this
argument was not properly raised below, it is not properly
before us on appeal. See, e.g., Sage Prods., Inc. v. Devon
Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997).

***Judge Bryson DISSENTED as to the Tygar-Yee article:

The Tygar-Yee article is dated March 1, 1993, but
there is no evidence as to the date of its publication. The
majority notes that the article was cited in a subsequent
article by Tygar and Yee published in 1994. That citation,
however, does not constitute evidence that the 1993
Tygar-Yee article was ever publicly accessible, particu-
larly in light of the fact that the later article was written
by the same authors. The majority also relies on a decla-
ration by Dr. Tygar, the co-author of the Tygar-Yee arti-
cle, stating that the article is prior art. Dr. Tygar’s
declaration, however, consists of a conclusory legal asser-
tion and provides nothing by way of evidence in support of
that assertion.
In the summary judgment proceedings, Endicia of-
fered as an exhibit a printout of a webpage that an Endi-
cia attorney identified as “a printout of Carnegie Mellon
University’s School of Computer Science archive report
for the year 1993.”

The exhibit is entitled “Index
of/anon/1993” and consists of a list of file names, file sizes,
and the dates on which the files were last modified.
Endicia claims that one of the files, “CMU-CS-93-,” represents the Tygar-Yee article. That file
name lists a modification date of May 8, 1993. The major-
ity characterizes the website as a “public forum,” but the
record contains no evidence that the webpage in the
exhibit was accessible to the public or widely dissemi-
nated in 1993. See In re Lister, 583 F.3d 1307, 1211 (Fed. Cir. 2009)
(“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 dili-
gence, can locate it.”); Cordis Corp. v. Boston Scientific
Corp., 561 F.3d 1319, 1332-35 (Fed. Cir. 2009) (holding
that an academic paper distributed among a limited set of
professional colleagues is not a prior art publication).
The majority highlights the fact that
identified the Tygar-Yee article as bearing a 1993 date in
several information disclosure statements that it filed in
2000 in connection with other patents. It is well settled,
however, that a patentee’s inclusion of a reference in an
information disclosure statement does not constitute an
admission that the reference is prior art. 37 C.F.R. §
19.7(h);, Inc. v. Lansa, Inc., 594 F.3d 860,
866 (Fed. Cir. 2010); Abbott Labs. v. Baxter Pharm. Prods., Inc.,
334 F.3d 1274, 1279 (Fed. Cir. 2003).
Finally, the majority states that submit-
ted no evidence that the Tygar-Yee article was not pub-
lished in 1993. Apart from the ordinary difficulty of
proving a negative, it is well settled that, at the summary
judgment stage, “the moving party must make a prima
facie showing that it is entitled to summary judgment.”
Celotex Corp. v. Catrett, 477 U.S. 317, 331 (1986). When
the movant has the ultimate burden of proof on an issue,
it must show that it is entitled to judgment, and if it does
not do so, the non-moving party need not come forward
with opposing evidence. Saab Cars USA, Inc. v. United
States, 434 F.3d 1359, 1368 (Fed. Cir. 2006); 11 James
Wm. Moore, Moore’s Federal Practice ¶ 56.40[1][c] (2011
ed.) (“[T]he movant [with the burden of proof on the
merits] must produce evidence that would conclusively
support its right to a judgment after trial should the
nonmovant fail to rebut the evidence. . . . [T]he evidence
in the movant’s favor must be so powerful that no reason-
able jury would be free to disbelieve it.”) In the context of
a motion for summary judgment of invalidity, the burden
is not on the patentee to present evidence that a reference
is not prior art; instead, the party challenging the patent
has the burden to make a prima facie showing that the
reference was publicly accessible. Because Endicia failed
to show that the Tygar-Yee article is prior art, I would
hold that the district court erred in invalidating the six
asserted claims of the ’777 and ’991 patents as obvious.


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