CAN AN INTERNET REFERENCE BE A PRINTED PUBLICATION?

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CAN AN INTERNET REFERENCE BE A “PRINTED

PUBLICATION”?

Joanna Toke [1] INTRODUCTION

Much of the information to the public is provided by the Internet today. The Internet has also become increasingly popular among researchers who now turn to it for articles, journals, and online databases. [2] Therefore, the question of whether an Internet reference is a “printed publication” is critical for today's inventors, patent attorneys, and judges. [3] It is important for inventors and patent attorneys because they decide whether to pursue a patent based on the existing prior art. [4] It is likewise important for judges because judges may be asked to resolve a dispute where the party challenging a patent's validity offers an Internet reference as the potentially invalidating prior art. [5]

This Article argues that an Internet reference is a “printed publication” within the terms of Section 102 if it is accessible to the public and credible. This Article begins with a brief review of the “printed publication” requirement of Section 102. Next, it discusses two different theories that emerged interpreting the “printed publication” bar to patentability, focusing, in particular, on the impact of technological advancement on judicial interpretations of § 102. The Article then explores existing commentary on the matter and argues that while the commentaries address many crucial aspects of the statutory bar, they may nevertheless be insufficient in defining whether an Internet reference is a “printed publication.” The article continues by recommending that a “printed publication” requires both public accessibility and credibility. Accessibility should be dependent on the author's or inventor's intent to share his work with the public. Moreover, the Federal Rules of Evidence may be used to ensure the integrity of a reference. Lastly, the article analyzes the unanswered question in MercExchange v. eBay of whether a newsgroup posting is a “printed publication” within the terms of §102. [6] The article concludes that the newsgroup posting in MercExchange was not a “printed publication” because it was not publicly accessible; however, newsgroup postings could be “printed publications” if certain other requirements are met. [7]

I.PATENTABILITY &THE “PRINTED PUBLICATION”BAR

An invention must meet three statutory requirements in order to be patented: it must be novel, non-obvious, and useful. [8] Once these requirements are satisfied, the inventor is granted the right to exclude others from “making, using, or selling the invention.” [9] This is referred to as the monopoly contract between the inventor and the public. [10] In exchange for this exclusive right, however, the inventor must fully share his idea with the public. [11]

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An inventor can only share those ideas that are new, or those that were not previously known. [12] If an idea is already in the public domain, an inventor cannot receive a patent for it. Title 35 Section 102 of the United States Code (U.S.C.) articulates this novelty requirement. [13] More specifically, Section 102 provides that a “printed publication” denies patentability to those inventions that are already known to the public. [14] Under Section 102(a), an applicant is barred from obtaining a patent if the invention was already described in a printed publication, anywhere in the world, prior to the applicant's invention date. [15] Similarly, an applicant is barred under Section 102(b) from obtaining a patent if the invention was already described in a printed publication, anywhere in the world, more than one year prior to the date the application was filed in the United States (US). [16]

II.THE MEANING OF “PRINTED PUBLICATION” IS CENTRAL TO PATENTABILITY

The question of what constitutes a “printed publication” for the purposes of Section 102 has been central to the issue of patentability ever since the 1836 enactment of the patent statute incorporated a provision specifically requiring that the invention must not have been previously described in the public domain. [17] Many cases have tested the 1836 formulation of the phrase in light of technological advances, but theorists, courts, and the United States Patent and Trademark Office (USPTO) alike have continued to struggle with an accurate definition of “printed publication.” [18]

In determining the legislative intent behind the 1836 statute, two theories emerged with one emphasizing “printed” and the other emphasizing “publication.” [19] Both theories employed a great deal of speculation as to the legislative intent, primarily because the method of printing utilized in 1836, when the enactment took place, became commercially infeasible and obsolete years later. [20] The dichotomy of “printed” and “publication” eventually eroded away, and the definition of “printed publication” became viewed as a unitary concept with a central focus on accessibility and dissemination. [21]

A. “Print” theory of “printed publications”

Under the “print” theory, two elements must be satisfied in order for a document to be a “printed publication” under Section 102. [22] The idea must first be published, which means that a document must be either stored in a place where it could be publicly accessible or distributed to the public. [23] The document must also be produced by a mass printing process that ensures the copies are legible. [24] Once a document meets these two tests, it is a “printed publication” irrespective of whether the public had access to it. [25] Simply put, for an idea to be a “printed publication” under the “print” theory, the idea must be permanently recorded in the sense that it is published, and it must not be kept secret from the public. [26]

The rationale behind this theory is best understood in its historical context, when the only means of permanent mass dissemination of information was the printing press. [27] Although copies of a

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document, undoubtedly, could be made by hand, Congress did not believe such copies met the level of accessibility of printed publications. [28] Congress wanted to ensure that a document conveying information to the general population was in a form that was capable of being distributed to a large number of people. [29] Furthermore, Congress believed that variations in people's handwriting could cause confusion as to what information was in the document. [30] A printing process was, therefore, the only means that Congress believed could ensure both the quality of the documents and their ability to be distributed to a large number of people. [31]

Throughout the years, the law expanded to account for advances in technology. [32] In Gulliksen

v. Halberg, for instance, the court was asked to decide whether a document produced by a typewriter was

a “printed publication.” [33] The court held that it was because the letters were all of uniform shape and size, the spacing was roughly equal, and the document itself could be reproduced using the photographic process. [34] A typewriter could further guarantee that the document was in legible form, a characteristic the court found to be of particular importance. [35]

In addition to considering material produced by a typewriter, the court also examined documents produced by microfilm. [36] In In re Tenney, a microfilmed copy of a German patent application was indexed and placed in the Library of Congress. [37] The Court of Customs and Patent Appeals (CCPA) was troubled by the fact that the microfilm could only be made available to the public “by virtue of the publication of a bibliography,” and that even though a copy of the microfilm could be produced, there was still no proof that the public had actual knowledge of the application. [38] The CCPA concluded, irrespective of the fact that the new microfilm technology provided a means of producing multiple copies, that the patent application was not a “printed publication” because there was no guarantee that it would be accessible to the relevant public. [39]

In summary, for a document to be a “printed publication” under the “print” theory, it must be published, either by being publicly accessible or by being disseminated to the public, and must be embodied in some legible form that allows copies to be reproduced from it. [40]

B. “Publication” theory of “printed publication”

The “print” theory was soon discarded and “printed publication” became viewed as a unitary concept. [41] The Tenney court reasoned that the only distinction between ‘handwritten’ and ‘printed’ publications was the method of producing them, and that ‘printed’ publications were only favored because they increased the likelihood that a reference would be disseminated to the relevant public. [42] The court noted that “Congress no doubt reasoned that one would not go to the trouble of printing…unless it was desired to print a number of copies. [43] Advances in technology, however, no longer required that information be ‘printed’ in order to be disseminated. [44] The focus of the inquiry, therefore, shifted to whether a document had been made available to the public. [45]

A document is a “printed publication” under the “publication” theory if it is embodied in a form from which multiple copies can be reproduced and disseminated to the public. [46] This theory is best

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expressed in In re Wyer, when the court revisited the issue of whether a patent application contained on microfilm is a “printed publication.” [47] Twenty-three years after the Tenney case, the court held that the document was a “printed publication” because it was both open for public inspection and properly indexed. [48] The court further noted that a document is a “printed publication” “whether…printed…on microfilm or a magnetic disk or tape…” so long as the method of reproducing it is available. [49] This suggests that information on microfilm is a “printed publication” because copies can be made via the microfilming process. [50] The central idea under the “publication” theory, therefore, is whether information is placed in the hands of the public. [51]

The “publication” theory is broader than the “print” theory, and thus is able to deny patentability in more cases because it only requires that a document be made available to the interested public. [52] In fact, one copy, strategically located is enough to satisfy the requirement as long as the public is not denied access to it. [53] The court in In re Hall held that one copy of a dissertation properly indexed and placed in a library in Germany was a “printed publication” because anyone interested in the art could travel to the library and access it. [54] In contrast, the court in Badowski v. United States held that a document published by the government of the USSR was not a “printed publication” because, although it was both printed and published, it was not easily accessible. [55] Moreover, in In re Cronyn, the court held that undergraduate theses placed in the college library and indexed according to the author's name were not printed publications. [56] The court reasoned that since the papers were not indexed in a meaningful way, they were not accessible and, thus, were not “printed publications.” [57]

In conclusion, courts have abandoned the “print” theory for a broader “publication” theory of analysis because advances in technology no longer required a document to be ‘printed’ in order to be disseminated. Under the “publication” theory, the focus is on whether the document is widely available and accessible to the public. [58]

III.EXISTING COMMENTARY ON THE MATTER IS INSUFFICIENT AT DETERMINING WHETHER AN INTERNET REFERENCE IS A “PRINTED PUBLICATION”

Four scholarly approaches have been advanced for determining whether an Internet reference constitutes a “printed publication” under Section 102. Historically, courts have looked at accessibility and dissemination as central factors in making the determination, but exactly what is embodied by these terms is subject to interpretation. The approaches discussed below provide valuable guidance in addressing the problem but, nevertheless, they fall short in constructing a workable definition of “printed publication” that is consistent with existing case law and public policy.

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Barger concludes that internet information is a “printed publication” within the meaning of Section 102. [59] According to Barger, the “printed” requirement is analogous to the “writing” requirement of copyright law. [60] Under copyright law, a “writing” must be “fixed in a tangible medium of expression” to be copyrightable. [61] It is “fixed” when it is embodied in a “copy or photorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitional duration.” [62] Similarly, Internet information is “fixed” and is a “printed publication.” [63] Barger supports his theory by citing Wyer, where the court noted that advances in technology, such as the typewriter or the microfilm, satisfy the “printed publication” requirement of Section 102 in part because the documents produced by these machines are “fixed.” [64]

Requiring information to be fixed, however, does not fully solve the problems posed by Internet material. Barger, therefore, has several limitations. First, Barger does not provide guidance in assessing material that may only remain fixed for a limited period of time, such as emails, blogs, or instant messages. [65] These different forms of Internet information are “fixed” for some period of time; however, they can also be deleted, leaving otherwise invalidating material hard to recover. [66]

Barger further does not address the situation where one website provides hyperlinks to additional elements of the invention. [67] Under Barger's rationale, a website with hyperlinks could not be a “printed publication” because all the elements of the invention were not “fixed” in a single prior art reference. [68] However, according to the Federal Circuit,

“Incorporation by reference provides a method for integrating material from various documents into a host document—a patent or printed publication in an anticipation determination—by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” [69]

Thus, a single website could be invalidating prior art if it sufficiently describes an invention by providing hyperlinks to other references on the Internet. [70] This raises the third limitation under Barger, namely that of credibility. [71] No guarantees exist that the hyperlinks, or other fixed information, are credible, and Barger does not provide a method for assuring either the integrity of the hyperlinks or of the reference in its entirety. [72]

Despite several shortcomings, the Barger article establishes one thing for certain: Internet information can be a “printed publication” for some unspecified period of time, and thus, it can serve as a statutory bar to an inventor seeking a patent. [73]

B. The Oppenheimer Standard: Focus on indexing

The Oppenheimer article does little to address the limitations presented by Barger's theory and further does little to address the problem presented by Internet publications. [74] Oppenheimer focuses on indexing and concludes that Internet publications are not “printed publications” within the terms of Section 102 because they are not properly indexed. [75] Oppenheimer relies on cases such as Hall and

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Tenney and concludes that accessibility includes both a “right to look” and an “ability to find.” [76] He reasons that since methods of indexing material on the Internet do not enable the “ability to find,” Internet information cannot be a “printed publication.” [77]

There are two primary limitations to Oppenheimer's theory. [78] The first is that it is outdated in today's technological world. [79] With all the different search engines available, like Google and Yahoo, information is relatively easy to find. [80] One needs only to type a few words into a designated field, click “Search,” and find himself directed to a vast array of possible resources. Internet search engines, therefore, enable the “ability to find.” Second, Oppenheimer does not address the credibility issue. [81] Oppenheimer himself acknowledges that Internet material is susceptible to modification, but he does not present a solution to separating authentic documents from those that have been compromised. [82]

In conclusion, Oppenheimer does little to address the issue of whether Internet information is a “printed publication.” [83] He correctly acknowledges the problem posed by compromised Internet references, but relies on antiquated reasoning to conclude that an Internet reference cannot serve as a medium for invalidating patents under Section 102. [84]

C. The Pierotti Standard: First talk of reference credibility

Like Barger, Pierotti concludes that Internet publications are “printed publications.” [85] In contrast to Barger and Oppenheimer, however, Pierotti focuses on the credibility issue presented by Internet material. [86] Pierotti proposes that Internet postings must be indexed and authenticated, mirrored to another location, or visited by the public in order to be sufficiently credible to satisfy the requirements of a “printed publication.” [87] Pierotti reasons that these safeguards are required to assure the Internet reference is publicly accessible and unmodified. [88]

Pierotti places a great deal of emphasis on the actions of the individual recipient, rather than the sender, in preserving the integrity of the information. [89] According to Pierotti, the integrity of a document becomes questionable when the original owner can still make changes to it. [90] Under this rationale, transitory information, such as words spoken in a chat lounge, email messages, and instant messages could be “printed publications” under Section 102 so long as the information conveyed through each of the named channels is distributed to or at least accessible by the relevant public. [91] Once information is disseminated in this fashion, Pierotti argues, the host cannot modify it. [92]

Pierotti does more than Barger or Oppenheimer to ensure the integrity of Internet material, but his arguments are not persuasive in light of existing case law. Case law interpreting the meaning of “printed publication” has focused on references which are freely shared with the public and carry no obligation to be verified by the owner or preserved in its original form. In Hall, for instance, the court only required that the reference be sufficiently accessible prior to the critical date. The court did not place any restrictions on how the reference could be maintained or used after it had been made accessible. [93] Thus, a reference could be modified by recipients down the chain of transmission and still be credible

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under Pierotti. More emphasis should be placed on the integrity of Internet material once it leaves the hands of its owner and is in the public domain. [94]

Under the Pierotti theory, the integrity of an Internet publication is dependant on the actions by the recipients to preserve the document in its original form; however, more needs to be done to ensure the credibility of a reference once it leaves the hands of the owner.

D. The Wright Standard: Need for both accessibility and authentication

Wright proposes that an Internet document is a “printed publication” if it satisfies a two-prong test: (1) it must be accessible and (2) it must be authenticated. [95] Authentication is crucial because it ensures the integrity of the document. [96] Once the information fulfills these requirements, it is a “printed publication” under Section 102. [97]

According to Wright, there must first be a modicum of accessibility. [98] This requirement is satisfied by showing that persons of ordinary skill could find the document “by the exercise of reasonable diligence.” [99] Wright relies on Hall where the court states that only a minimum display of accessibility is necessary to demonstrate that the reference was available to the relevant public. [100]

In addition to accessibility, the Internet document must also be authenticated. [101] Wright proposes that the Federal Rules of Evidence could be used to validate an Internet reference. [102] Using the Federal Rules, according to Wright, may create confidence in electronic prior art references and bring certainty to the patent system. [103] Wright argues that since the Federal Rules are used both in Interference proceedings before the USPTO and any federal court, they should also be used to establish a minimum level of credibility that a reference must meet in order to be admitted into evidence in a patent litigation. [104] Wright relies on United States v. Jackson, where the Seventh Circuit noted that an Internet website would be admissible as a computer compilation under Rule 803(6) if proper foundation established its reliability. [105] HTML codes that depicted an invention on a website, for instance, may be admissible as photographs or data compilations. [106] Information found on a government-sponsored website, moreover, may not even require foundation because it would be admissible as a self-authenticating document under Rule 803(8). [107]

Despite suggesting a potential solution to assuring the credibility of Internet references, the Wright article, nevertheless, falls short in two particular areas. First, it does not adequately address the issue of dissemination. Courts and scholars alike have considered accessibility and dissemination to be the central issues in determining whether a document was a “printed publication,” but Wright discards the “dissemination” component all together. [108] Moreover, the article does not adequately address how a reference could be admissible in a court of law. Wright proposes that Rule 901 should govern authentication; however, evidence that meets the requirements of Rule 901 could nonetheless still be barred as hearsay under Rule 801. Consequently, additional requirements are needed to assure that Internet material can be admitted as a credible source into evidence. Without being admissible, a prior art reference may not be able to invalidate a patent.

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IV.AN INTERNET REFERENCE MUST BE ACCESSIBLE AND CREDIBLE TO BE A “PRINTED PUBLICATION”

WITHIN THE MEANING OF SECTION 102

Case law and public policy suggest that accessibility and credibility are the determining factors in deciding whether Internet material is a “printed publication.” [109] Public accessibility is determined by the author's intent. [110] Thus, if an author intends to share, or disseminate, his work with the public, then the work is accessible. [111] Conversely, if an author intends to restrict the public from viewing his work, then the work is not accessible and is not a prior art reference. [112]

Internet material must also be credible to satisfy the “printed publication” requirement. [113] Credible documentary evidence must be authenticated and admissible. [114] As such, the Federal Rules of Evidence should be used in accessing credibility. [115]

A. References should be accessible: Author's intent is determinative

An Internet reference should first be accessible to the interested public. [116] A determining factor in deciding accessibility is whether the author intends to share, or disseminate, his work with the public. [117] Scholars note that accessibility and dissemination are determinative when deciding whether Internet material is a “printed publication.” [118] These characteristics alone, however, may be insufficient in addressing the harder cases, such as those involving an accessible document that has not been disseminated. [119]

More difficult cases demand an inquiry into the author's intent. [120] Some courts have held that a document need not be actually disseminated to be a “printed publication” as long as it is accessible to the public “by the exercise of reasonable diligence.” [121] Other courts have concluded that a document is not a “printed publication” if it was not disseminated despite being accessible to the relevant public. [122] In these instances where there was no dissemination, the courts look to the author's intent in determining whether the document was publicly accessible. [123] If the intent was to share the document, then the court would find the document invalidating. [124] On the other hand, if the intent was to keep the information secret, then the court would find that the material was not a “printed publication.” [125] As the court in Wyer noted, “publicly accessible” means “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 and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.” [126] Therefore, the author's intent to disseminate his work is decisive in finding that the work in question is a publicly accessible. [127]

Support for this preposition can be found in the underlying goals of patent law as well as in case law. The overall goal of the patent system is to encourage scientific advancement by granting specific rights to inventors in return for having inventors share their innovations with the public. [128] Scientific advancement, therefore, is promoted through the patenting of inventions that are novel. [129] If an invention is already in the public's hands, that invention no longer serves this purpose and is not patentable. [130] Nevertheless, courts have made an exception for inventions that are in the public domain, but are used for an experimental purpose. [131] In such situations, it is in the public's interest to have inventions perfected before protection is granted, and it would be unfair to deny patentability to those inventions where utility can solely be determined through significant experimentation. [132] The difference between this scenario and one where the inventor simply places his work in the public domain

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is the inventor's intent. [133] The inventor who places his work in the public domain intends to share his idea, [134] whereas, the inventor who places his work in the public domain for the purpose of scientific experimentation intends to further develop and perfect his idea before eventually sharing it. [135] Therefore, looking at the inventor's intent in determining whether a reference is a “printed publication” is consistent with the underlying goals of the patent system. [136]

Further support for the proposition that the author's intent is central in determining accessibility can be found in case law. [137] Courts have looked at various factors in determining the author's intent. For instance, courts have often looked at whether a document was indexed or catalogued. [138] In Hall, the court held that a single copy of a thesis was accessible, in part, because it was properly indexed. [139] The author intends to share his writings with the interested public when he aids the public in locating the thesis through the use of an indexing system. [140] By indexing the writing, the author was therefore not looking to restrict the public's access to the thesis. [141] Similarly, in SRI Int'l Inc. v. Internet Security

System, Inc., the court found that the FTP site was a “printed publication” because the address of the

website was distributed to members of the interested public in presentations and via e-mail, the site was commonly referenced by individuals on Google Groups, and the site was referenced on an online newsgroup. [142] Since there was sufficient indexing, such that the interested public could locate the paper on the website, the paper was an invalidating prior art reference. [143]

Hall [144] and SRI International [145] differ from the situation in Cronyn [146] where an undergraduate thesis was indexed by the author's name. The author's name was not connected in any way to the content of the article, so someone looking for a thesis on a given subject matter would not be able to locate it using this indexing system. [147] The court found that the thesis was not sufficiently “accessible” because it was not indexed “in any meaningful way” and did not aid in helping the relevant public locate it. [148]

Courts have also considered whether a patent application was available to the public at the Patent Office in determining accessibility. [149] In Wyer, the court was asked to decide the status of a patent application filed with the Australian Patent Office. [150] Copies of the application and equipment were available to public inspection at the Australian Patent Office as well as at each of its five “sub-offices” over one year before the applicant filed his application in the US. [151] The court found that the patent application was an invalidating prior art reference despite the fact that there was no proof regarding actual viewing or dissemination of any copy of the application. [152] Since there was no dispute that the records were maintained for the purpose of dissemination, the application was a “printed publication”. [153] Conversely, in Bruckelmyer v. Ground Heaters, Inc., the court held that drawings in a Canadian patent application were not accessible because they were not available in multiple locations, could not be ordered from the Canadian patent office, were not indexed or cataloged, and their presence cannot be divined from the Canadian patent that eventually issued. [154] Even though the drawings could be theoretically accessible if someone happened to stumble upon them, it is uncertain that the inventor intended to make those drawings accessible to the public. [155]

Finally, courts have also looked at whether material was distributed at a conference in determining accessibility. [156] In MIT v. AB Fortia, for instance, the court found that a paper orally presented at a conference qualified as a “printed publication” because copies of that paper were distributed after the conference to those interested in it upon request and without any restrictions as to use.

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[157] Since the author personally distributed copies of his paper, there was no question about his intent to share his work. [158] Similarly, in In re Klopfstein, the court found that a slide or poster presentation was a “printed publication” even though it was not actually distributed. [159] Klopfstein is a controversial case because no copies of the presentation were disseminated to the public and the presentation was never catalogued or indexed in any database or library. [160] The slide presentation, however, was printed out and pasted on poster boards that were displayed for two and a half days at the conference. [161] Furthermore, the public was not prohibited from taking notes or copying the presentation. [162] Since the author had intended to share his work with the relevant public, the reference was held to be invalidating prior art. [163] The court's decision in Klopstein can best be justified by the court's holding in Ecolochem

v. Southern California Edison. [164] In Ecolochem, an oral presentation at a conference, convened twelve

years earlier, was held to be a “printed publication” despite a showing that the slides used had been distributed. [165]

MIT [166] and Klopfstein [167] differ from the situation in Regents of the Univ of CA v.

Howmedica where the court held that a slide presentation given at lecture was not a “printed publication”

for the purposes of Section 102. [168] In Howmedica, the presenter did not make any prints of the slides or distribute any material to the audience. [169] Moreover, there was no evidence that material would have been available upon request. [170] Since the intent of the author was not to distribute or share his work with the public, the reference was not accessible. [171]

In conclusion, an Internet reference must be made accessible with the intent to share that information with the relevant public in order for that reference to be a “printed publication”. [172] Public policy and case law suggest that the intent of the author or inventor is determinative when deciding whether a reference has been made accessible. [173]

B. References should be credible: Authentication and admissibility required

In addition to being accessible, a reference should be credible and reliable before it can be considered an invalidating prior art reference. [174] Credibility should be decided using the Federal Rules of Evidence, specifically, Rules 104, 402, 801, and 901. [175] A determination of credibility first requires authenticating the record in question, and then asking whether it is admissible under a specific rule. [176]

There are two public policy justifications for using the Federal Rules of Evidence. [177] First, in any litigation, the Federal Rules govern the admissibility of evidence. [178] Thus, if a patent holder is sued and the claim is that his patent was anticipated by a prior art reference, only evidence that satisfies the standards set forth by the Federal Rules may be admissible in court. [179] Second, the Federal Rules of Evidence may provide guidance on whether Internet information is a “printed publication.” [180] Since the PTO has not established a set of guidelines for assessing the reliability of material found on the internet, the Federal Rules may provide the needed principles that a court should apply when confronted with Internet information being offered as invalidating prior art. [181]

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1. Authentication of evidence is a Rule 901 determination

The first step in analyzing credibility is determining whether the Internet reference can be authenticated. [182] A large amount of electronic information can be “fixed in a tangible medium of expression,” such as on a hard drive or on a magnetic disk; however, electronic information is also susceptible to modification. [183] Once modified, either by the author or by fellow Internet users, the integrity of the information is put into question. [184] Authentication, thus, provides a means of verifying the original information and ensuring that the potentially invalidating reference is reliable. [185]

Authentication of an electronic record is governed by Rule 901. [186] Rule 901 provides generally that the “requirement of authentication or identification as a condition precedent to admissibility is satisfied by evidence sufficient to support a finding that the matter in question is what its proponent claims.” [187] Internet material can be authenticated under Rule 901(b)(9), which specifically applies to computers. [188] Rule 901(b)(9) provides that a “process or system” may be authenticated by “evidence describing a process or system used to produce a result and showing that the process or system produces an accurate result.” [189] Under this rule, the owner or custodian of the electronic records would need to testify to the contents of the record. [190] Testimony of the owner or custodian is governed by Rule 901(b)(1), which stipulates that a witness must testify that a matter “is what it is claimed to be.” [191] In the case of an Internet reference, authentication through testimony of its author or custodian may be offered. [192] Once information is authenticated under Rule 901, the material should be considered reliable for the purposes of determining whether it is prior art. [193]

2. Admissibility of evidence under a specific exception to hearsay

The second step in analyzing credibility is determining whether the electronic reference is admissible under a specific rule. [194] Rule 402 provides that all relevant evidence is admissible, except as otherwise provided by the Federal Rules. [195] One bar to admissibility, however, is Rule 801 which governs the admissibility of hearsay evidence. [196] If the original author is available to authenticate the Internet reference, then there is no problem. [197] This is supported in the Advisory Committee notes for Rule 801 that provide “if the witness admits on the stand that he made the statement and that it was true, he adopts the statement and there is no hearsay problem.” [198] Rule 801, therefore, may not serve as a bar to authenticating an electronic record if the author testifies to its contents. [199]

Authentication can become problematic, however, when the author is unavailable. [200] Under these circumstances, the record should be admissible under one of the exceptions to hearsay found in Rule 803 and 804. [201] The most likely exception may be the business record exception found in Rule 803(6). [202] The relevant language of Rule 803(6) states:

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(6) Records of Regularly Conducted Activity. A memorandum, report, record, or data compilation…made at or near the time by, or from information transmitted by, a person with knowledge, if kept in the course of a regularly conducted business activity, and if it was the regular practice of that business activity to make the memorandum, report, record, or data compilation, all as shown by the testimony of the custodian or other qualified witness…unless the source of information or the method or circumstances or preparation indicate a lack of trustworthiness. [203]

The term “business record” has been interpreted broadly so as not to limit those records which have been made in the course of traditional business or commercial enterprises. [204] According to the Advisory Committee notes to Rule 803(6), the intention has been “to emphasize a requirement of routineness and repetitiveness.” [205] As a result, the phrase “a regularly conducted activity” was adopted to illustrate the expansion of the rule to include, for example, records of information gathered through the conduct of research and experimentation. [206] In Minnesota Mining and Manufacturing Co. v. The Ansul

Co., the court found that a special laboratory report and a laboratory notebook satisfied the requirements

of the business record exception to hearsay. [207] The special report was held admissible because of witness testimony that such a report was a standard procedure under the circumstances. [208]

In the event that a tangible report or notebook is unavailable as in 3M, a print-out of the Internet reference may be admitted. [209] The Federal Rules of Evidence define “recordings” to include “electronic recording, or other form of data compilation,” making it clear that Internet references may be admitted under the business records exception provided that all of the requirements of Rule 803(6) are satisfied. [210] The Federal Rules also allow a copy or a duplicate of the original material to be admissible. [211] Rule 1003 states that “a duplicate is admissible to the ame extent that an original unless (1) a genuine question is raised as to the authenticity of the original or (2) in the circumstances, it would be unfair to admit the duplicate in lieu of the original.” [212] The Federal Rules further provide that an original is “the writing or recording itself or any counterpart intended to have the same effect by a person executing or issuing it … If data are stored in a computer or similar device, any printout or other output readable by sight, shown to reflect the data accurately, is an original.” [213] Therefore, a print-out of the Internet material in question can be admitted to establish a prior art reference. [214]

In summary, an Internet reference may qualify as a “printed publication”, if it: (1) has been made accessible with the intent of disseminating it to the relevant public and (2) is admissible as evidence under the Federal Rules of Evidence. [215] For a reference to be admissible as evidence, it should be authenticated and satisfy a specific rule. [216] If these conditions are met, Internet material should be considered credible. [217]

V.MERCEXCHANGE,LLC V. EBAY,INC.:DO NEWSGROUPS CONSTITUTE “PRINTED PUBLICATIONS”?

In MercExchange v. eBay, eBay alleged that a prior newsgroup posting invalidated a MercExchange patent. [218] MercExchange countered by claiming that the newsgroup posting on the

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Internet did not qualify as a “printed publication” within the meaning of Section 102. [219] The District Court agreed and upheld the validity of the MercExchange patent. [220] The patent in question was dismissed later on a summary judgment motion, thus, the issue of whether a newsgroup posting was a “printed publication” was not further discussed. [221] As a result, the issue has not been foreclosed by the district court's decision. It will almost certainly arise again in future cases, and, therefore, we should consider the issue in light of the aforementioned analysis.

A. Procedural history behind the MercExchange, LLC v. eBay, Inc. dispute

On September 26, 2001, MercExchange brought an action alleging patent infringement against eBay, Inc., Half.com, and ReturnBuy. [222] MercExchange claimed infringement of three patents. [223] The relevant patent for the “printed publication” inquiry (“the ‘051 patent”) pertained to a method and apparatus for facilitating internet commerce through an internetworked auction. [224]

The defendant, eBay, brought a Motion for Summary Judgment arguing that certain claims of the ‘051 patent were invalid for lack of novelty and obviousness. [225] In particular, eBay argued that the idea for an online auction service was published more than one year before the ‘051 patent application was filed, thus, invalidating the ‘051 patent under the prior “printed publication” bar. [226] The Internet reference was a newsgroup posting found on “rec.collecting.stamps.” [227] A stamp collector, Choy Heng-Wah, conceived and published “BidBroker” on this website. [228] The posting by Mr. Choy read: “What would be really nice would be a “bid-broker” software. It might work something like this: 1. Interested bidders register their email address with Bidbroker.

2. A seller send his description, reserve price, cut-off-date, etc to Bidbroker

3. The BidBroker assigns a lot number to the description, and forwards it to the list of registered bidders. 4. On the cut-off date, the Bidbroker determines the winning bidder and the wining price (realisation [sic]) and forwards this info to the seller and the winning bidder. The seller and winning bidder communication directly to complete the transaction. The realisation [sic] price is forwarded to all bidders who put in a bid.

To pay for the upkeep of such a system, the seller (and possibly the purchaser) pays the operator/owner of the system a “commission” based on percentage of realisation [sic], or perhaps a flat handling charge per lot. Perhaps someone like AOL might provide this service. [229]

The defendant, eBay, contended that Mr. Choy's BidBroker system anticipated each and every element in the ‘051 patent. [230] The District Court, however, held that the BidBroker system was not a “printed publication” within the meaning of Section 102 because it was not publicly accessible. [231] The court based its decision on the grounds that the newsgroup posting was intended for persons who subscribed to the stamp collecting newsgroup, and not the general public; permission was required to join the newsgroup and there was no guarantee that permission would be granted; and the postings were not

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indexed or catalogued in any way. [232] These facts, the District Court reasoned, provided no assurance that one would have been aware of the Mr. Choy's postings, and, moreover, that one would have been able to access the postings. [233] Therefore, the court denied eBay's request for Summary Judgment. [234]

B. Background information about newsgroups

A newsgroup is a repository for messages posted from many users at different locations. [235] It is usually a discussion group where members can post messages about a variety of topics. [236] Once a posting is made, a copy of that message is stored in the local news server. [237] The local server then shares the posting with servers that are connected to it, if both servers subscribe to that specific newsgroup. [238] The propagation of the posting from one server to another is automatic. [239]

The medium for newsgroups is Usenet, which was invented around 1978. [240] Since the Internet has become ubiquitous, an increasingly diverse collection of newsgroups have appeared. [241] Many internet service providers and internet companies, such as Google, have even become news servers. [242] News servers have also appeared on the intranet allowing people to access newsgroups on either the Internet or the intranet. [243]

A newsgroup may be accessed in a number of different ways. [244] In the early period, a user could only access a newsgroup from a specific computer. [245] On that specific computer, the user would have to input a command to start the newsgroup software. [246] Today, however, the user can employ a graphic-based tool to accomplish the same function as the command-line tool provided. [247] Access to newsgroups, furthermore, is no longer limited to certain computers. [248] In fact, it is available on almost any computer that is connected to the Internet. [249]

C. The newsgroup posting was not a “printed publication” under Section 102 in MercExchange v. eBay

To be a “printed publication” within the meaning of Section 102, the newsgroup posting in MercExchange would have to satisfy a two-prong inquiry. [250] First, the newsgroup must be publicly accessible, and second, it must be credible. [251]

A finding of public accessibility is a fact-specific inquiry that requires a look at the author's intent. [252] Did Mr. Choy intend to share his writing with the relevant public, such that one would have had access to it? No.

First, Mr. Choy posted his writing specifically to a stamp collecting newsgroup. The public interested in this particular newsgroup, therefore, consisted of people interested in stamp collecting. [253] Unlike the series of cases dealing with conference presentations, Mr. Choy did not intend to share his writings about BidBroker with individuals interested in Internet commerce, Internetworked auctions, or

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anything relevant to the type of invention mentioned in the ‘051 patent because these individuals did not make up the audience that frequented the stamp collecting newsgroup. [254] The relevant public, therefore, did not have access to the posting. [255]

Second, Mr. Choy's posting was not accessible because an individual was required to get permission before joining the stamp collecting newsgroup, and there was no guarantee that permission would have been granted. [256] This is similar to the situation in Howmedica where there was no assurance that a copy of the slide presentation would have been made available upon request. [257] It is also similar to the situation in Bayer where the dissemination of an undergraduate thesis was dependant on a faculty review committee, and there was no guarantee that the relevant public would get access to it. [258] It is distinct from the holding in MIT, where a slide presentation was found to be accessible because it was distributed to those who requested it. [259] In MIT, as well as in Hall, a vital reason behind the courts' decision was the fact that the relevant public would not have been prohibited from accessing the document. [260] In MercExchange, there was no guarantee that an interested individual would not be denied access to the newsgroup, and, as such, the posting was not accessible.

Finally, Mr. Choy's posting was not accessible because the posting was not indexed or catalogued in any way. [261] Therefore, MercExchange is distinguishable from Hall and SRI International where the documents in question were indexed in such a way as to aid an individual in locating them. [262] Mr. Choy's posting is more similar to the situation in Cronyn where the student's thesis was found to not be accessible to the interested public because it was inadequately catalogued. [263] Since there was no index or catalogue, the relevant public would not have been able to learn of the posting and would not have had access to it.

Taking into consideration the above factors, it is evident that the newsgroup posting was not publicly accessible because the author did not intend to share his writings with the relevant public. As a result, the District Court was correct in holding that the posting was not a “printed publication” under Section 102.

D. Other newsgroup postings may be “printed publications” under Section 102?

Even though Mr. Choy's posting in MercExchange was not a “printed publication,” newsgroup postings could still satisfy the requirements under Section 102 and be an invalidating prior art reference.

To satisfy the first prong of the analysis, the newsgroup posting would have to be made available to the interested public without any restrictions on accessibility. [264] It would therefore have to be indexed or catalogued in such as way as to enable those interested in the material to search for and locate it. [265] It would also need to be posted on a website that was accessible to anyone using the Internet, or at least to those interested in the particular subject matter. [266] Once these conditions are fulfilled, it may be argued that the author intends to make his writings available to the public, and the posting could be considered a “printed publication.” [267]

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To satisfy the second prong of the analysis and be credible, the author or custodian of the posting may need to testify to the contents of the writing in order to support a finding that the matter in question is what its proponent claims. [268] If the author or custodian is unavailable to testify, the posting may need to satisfy the business records exception of hearsay to be admissible. [269] Since an “electronic record” is a “record” for the purposes of this exception, a printout of the posting may satisfy the exception. [270]

In conclusion, a newsgroup posting may, in certain circumstances, be a “printed publication” such that it would be an invalidating prior art reference under Section 102.

CONCLUSION

The issue of what constitutes a “printed publication” has been a central question in determining novelty ever since the 1836 amendment to the patent statute. The advent of the Internet has further complicated the issue, and courts have struggled in articulating an adequate definition. A firm definition, however, is needed because it would enable inventors, patent attorneys, and corporations to approach a potentially patentable idea with greater certainty.

Accessibility and credibility should be the decisive factors in assessing whether an Internet reference is a “printed publication.” Accessibility should be determined by the author's intent, and credibility should be determined by the Federal Rules of Evidence. This two-prong analysis of the “printed publication” requirement is consistent with the policies underlying patent law as well as with case law.

[1]. Joanna Toke is a registered Patent Attorney at the international law firm of Greenberg Traurig, LLP in Boston. She focuses her practice on intellectual property law, primarily on the preparation and prosecution of patent and trademark applications in the areas of biomedical devices, nanotechnology, life sciences, and electronic devices. Joanna received a Bachelor of Science in Microbiology and a Masters in Public Health from the University of Rochester. She graduated from Boston College Law School in 2008.

[2]. See Niel P. Pierotti, Does Internet Information Count as Printed Publication?, 42 IDEA 249, 250 (2002).

[3]. See id.

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[5]. See id.

[6]. See MercExchange, L.L.C. v. eBay, Inc., No. 2:01cv736 (E.D. Va, July 10, 2002), available at

http://mercexchange.com/pdfs/01ebay_071002.PDF (last visited Apr. 20, 2007).

[7]. See id.

[8]. 35 U.S.C. § 102(a)-(b) (1994 & Supp. 1999).

[9]. Pierotti, supra note 2, at 258.

[10]. Id.

[11]. Id.

[12]. Id.

[13]. 35 U.S.C. § 102(a-b) (1994 & Supp. 1999).

[14]. See id.

[15]. 35 U.S.C. § 102(a) (1994 & Supp. 1999).

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[17]. See Max Stul Oppenheimer, In Vento Scribere: The Intersection of Cyberspace and Patent Law, 51 Fla. L. Rev. 229, 239-42 (1998).

[18]. See id. at 242.

[19]. Id. at 242-243.

[20]. Id.

[21]. Jennifer M. Wright, A Contemporary Patent Act: Finding a Useful Definition of “Printed

Publication” In the Age of the Internet and On-Line Research, 85 J. Pat. & Trademark Off. Soc'y 732,

736-37 (2003).

[22]. Oppenheimer, supra note 17, at 243.

[23]. Id. at 244.

[24]. Id.

[25]. Id.

[26]. See id.

[27]. See id.

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[29]. See id.

[30]. See id.

[31]. Id.

[32]. See id. at 257-58.

[33]. 75 U.S.P.Q. 252, 253 (Pat. & Tr. Office Bd. App. 1937).

[34]. See id.

[35]. See id.

[36]. Pierotti, supra note 2, at 258.

[37]. 254 F.2d 619, 620 (Cust. & Pat. App. 1958).

[38]. Id. at 619, 629.

[39]. See id.

[40]. See Oppenheimer, supra note 17, at 244.

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[42]. 254 F.2d at 902.

[43]. See id.

[44]. Wright, supra note 21, at 737.

[45]. Id.

[46]. Id.

[47]. In re Wyer 655 F.2d 221, 223 (Cust. & Pat. App. 1981).

[48]. See id. at 226-27.

[49]. Id. at 227.

[50]. See id.

[51]. See Oppenheimer, supra note 17, at 244.

[52]. See id. at 243-244.

[53]. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986).

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[55]. 164 F. Supp. 252 (Ct. Cl. 1958)

[56]. 890 F.2d 1158, 1161 (Fed. Cir. 1989).

[57]. Id.

[58]. Oppenheimer, supra note 17, at 244.

[59]. G. Andrew Barger, Lost in Cyberspace: Inventors, Computer Piracy and “Printed Publications”

Under Section 102(b) of the Patent Act, 71 U. Det. Mercy L. Rev. 353, 363 (1994).

[60]. Id.

[61]. Id.

[62]. Id.

[63]. See id.

[64]. See Wyer 655 F.2d at 226-27; Tenney, 254 F.2d at 903.

[66]. Id.

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[68]. Id.

[69]. Id.

[70]. Id.

[72]. Id.

[73]. Barger, supra note 59, at 363.

[74]. See Oppenheimer, supra note 17, at 259-61.

[75]. Id.

[76]. Id.

[77]. Id.

[79]. Id.

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[81]. See Oppenheimer, supra note 17, at 259-61.

[82]. See id.

[83]. See id.

[84]. See id.

[85]. Pierroti, supra note 2, at 277.

[86]. Id.

[87]. Id.

[88]. See id.

[89]. See id.

[90]. See id.

[91]. See Pierroti, supra note 2, at 277.

[92]. See id.

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[94]. See Pierroti, supra note 2, at 277.

[95]. See Wright, supra note 21, at 744-746.

[96]. See id. at 747.

[97]. Id. at 745-746.

[98]. See id. at 745.

[99]. Id.

[100]. See 781 F.2d at 899

[102]. Id. at 747-48.

[103]. Id.

[104]. Id.

[105]. Id. at 747-48.

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[107]. Wright, supra note 21, at 749. [108]. Id. at 738. [109]. See Id. at 738. [110]. See Hall, 781 F.2d at 899 [111]. See Id. [112]. See Id.

[113]. See Wright, supra note 21, at 747.

[114]. See Pavan K. Agarwal, Under Strict Rules, Electronic Records Can Enter PTO Allows Electronic

Evidence in Patent Interferences Now, but FRE Must be Followed, June 6, 1998, http://www.foley.com/publications/pub_detail.aspx? pubid=2198.

[115]. Id.

[116]. See Hall, 781 F.2d at 899.

[117]. See Id.

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[120]. See Id.

[121]. See Id.

[122]. See Regents of the Univ of CA v. Howmedica, 530 F.Supp. 846, 859-60 (D.N.J. 1981).

[123]. See Id.

[124]. See Id.

[125]. See Id.

[126]. 655 F.2d at 226.

[127]. See Id.

[128]. See U.S. Const. art. I § 8, cl. 8.

[129]. See Id.

[130]. See Id.

[131]. See City of Elizabeth v. American Nicholson Pavement, 97 U.S. 126 (1878).

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[133]. See Id.

[134]. See Hall, 781 F.2d at 899.

[135]. See City of Elizabeth, 97 U.S. at 126.

[136]. See Id. [137]. See Hall, 781 F.2d at 899. [138]. See Id. [139]. See Id. [140]. See Id. [141]. See Id. [142]. 456 F.Supp.2d 623, 626 (2006). [143]. Id. [144]. 781 F.2d at 899 [145]. 456 F. Supp.2d at 626.

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[146]. 890 F.2d at 1161 [147]. Id. [148]. See Id. [149]. See Wyer, 655 F.2d at 226. [150]. Id. [151]. Id. [152]. See Id. at 226-27. [153]. See Id. [154]. 453 F.3d 1352, 1355 (2006). [155]. See Id.

[156]. See Klopstein, 380 F.3d at 1353; MIT v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985).

[157]. MIT, 774 F.2d at 1109.

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[159]. 380 F.3d at 1353. [160]. See Id. [161]. Id. at 1347. [162]. Id. [163]. See Id. at 1353. [164]. 227 F.3d 1361, 1369 (Fed. Cir. 2000) [165]. See Id. at 1369-70. [166]. See 774 F.2d at 1109 [167]. See 380 F.3d at 1353. [168]. See 530 F.Supp. at 859-60. [169]. 530 F.Supp. at 859. [170]. See 530 F.Supp. at 859-60. [171]. See Id.

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[172]. See Klopstein, 380 F.3d at 1353; Hall, 781 F.2d at 899; MIT, 774 F.2d at 1109.

[173]. See Id.

[175]. See Agarwal, supra note 114.

[176]. See Id.

[177]. See Id.

[178]. See Id.

[179]. See Id.

[181]. See Id.

[182]. Id.

[183]. See Id.

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[185]. See Id. [186]. Fed. R. Evid. 901. [187]. Id. [188]. Fed. R. Evid. 901(b)(9). [189]. Id. [190]. Fed. R. Evid. 901(b)(1). [191]. Id. [192]. See Id. [193]. See Id.

[194]. Agarwal, supra note 114.

[195]. Fed. R. Evid. 401.

[196]. Fed. R. Evid. 801.

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[198]. Id. [199]. Id. [200]. See Id. [201]. Fed. R. Evid. 803, 804. [202]. Fed. R. Evid. 803(6). [203]. Id. [204]. See Id. [205]. Id. [206]. Id.

[207]. 213 U.S.P.Q. 1024 (E.D. Wis. 1981).

[208]. Id.

[209]. See Fed. R. Evid. 803(6), 1003.

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[211]. Fed. R. Evid. 1003.

[212]. Id.

[213]. Fed. R. Evid. 1001.

[214]. See Fed. R. Evid. 803(6), 1003.

[215]. See Wright, supra note 21, at 745-46; Agarwal, supra note 114.

[218]. MercExchange, supra note 6.

[219]. Id.

[220]. Id.

[221]. Id.

[222]. See Id.

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[224]. MercExchange, supra note 6. [225]. Id. [226]. Id. [227]. See Id. [228]. Id. [229]. Id.

[230]. MercExchange, supra note 6.

[231]. See Id.

[232]. Id.

[233]. Id.

[234]. Id.

[235]. Zhichong Gu, MercExchange v. eBay: Should Newsgroup Postings be Considered Printed

Publications as a Matter of Law in Patent Litigation, 35 Golden Gate U. L. Rev. 225, 236 (2005).

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[237]. Id.

[238]. Id.

[239]. See Id.

[240]. Id. at 237.

[241]. Gu, supra note 235, at 237.

[242]. Id.

[243]. See Id.

[244]. Id. at 238.

[245]. Id.

[246]. Id.

[247]. Gu, supra note 235, at 238.

[248]. Id.

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[251]. See Id.

[254]. See Klopstein, 380 F.3d at 1353; MIT, 774 F.2d at 1109.

[255]. See Klopstein, 380 F.3d at 1353; MIT, 774 F.2d at 1109.

[256]. See Howmedica, 530 F.Supp. at 859-60.

[257]. See Id.

[258]. See Application of Bayer, 568 F.2d 1357, 1362 (Cust. & Pat. App. 1978).

[259]. See MIT, 774 F.2d at 1109.

[260]. See Hall, 781 F.2d at 899; MIT, 774 F.2d at 1109.

[261]. See Hall, 781 F.2d at 899; MIT, 774 F.2d at 1109.

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[263]. See 890 F.2d at 1161.

[264]. See Hall, 781 F.2d at 899.

[265]. See Id.

[268]. See Agarwal, supra note 114.

[269]. See Id.