Federal Circuit Clarifies Standards for Assessing Online References as Prior Art Printed Publications
In its decision in Voter Verified, Inc. v. Premier Election Solutions, Inc., the US Court of Appeals for the Federal Circuit clarified the standards for assessing online references as prior art printed publications.
On November 5, 2012, in Voter Verified, Inc. v. Premier Election Solutions, Inc., the US Court of Appeals for the Federal Circuit clarified the standards for assessing whether an online reference is a prior art printed publication under Section 102(b) of the Patent Act. The court held that even where the website containing the reference is not indexed through search engines or otherwise, the reference may still be a prior art printed publication if the reference was sufficiently accessible before the critical date to the public interested in the art.Close speedread
On November 5, 2012, the US Court of Appeals for the Federal Circuit issued an opinion in Voter Verified, Inc. v. Premier Election Solutions, Inc., affirming the US District Court for the Middle District of Florida's decisions in a consolidated appeal. The plaintiff, Voter Verified, Inc., owned U.S. Reissue Patent RE40,499 ('449 patent) for automated voting systems and methods. In 2009, Voter Verified sued the defendants, including various manufacturers and marketers of automated voting systems, alleging patent infringement. The district court held that claim 49 of the '449 patent was invalid as obvious under Section 103 of the Patent Act (35 U.S.C. § 103) finding that an article, known as the Benson article, that discussed the relevant technology and was available online before the critical date (one year before the earliest priority date for the '449 patent) constituted a prior art printed publication.
On appeal, among other challenges, Voter Verified challenged the district court's invalidity determination on claim 49 and the court's reliance on the Benson article as a prior art printed publication. Voter Verification argued that the Benson article should have been excluded from the prior art analysis because:
A web-based article must be searchable on the internet by pertinent terms to qualify as a prior art "printed publication" as defined by Section 102(b) of the Patent Act (35 U.S.C. § 102(b)).
The defendants failed to show any indexing on any database that would have allowed the interested public to locate the website containing the Benson article.
The Federal Circuit concluded that the Benson article was a "printed publication" within the meaning of Section 102(b) and that claim 49 was invalid for obviousness under Section 103. The Federal Circuit held that when considering whether an online reference qualifies as a prior art "printed publication," the key inquiry is whether the reference was made sufficiently accessible to the public interested in the art before the critical date. Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding its disclosure to the public.
In response to Voter Verification's argument that indexing is necessary for public accessibility, the Federal Circuit noted that it is merely a relevant factor. The court stated that the ultimate question is 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.
In upholding the district court's finding that the Benson article constituted publicly available prior art, the Federal Circuit noted that the website where the Benson article was posted:
Was well known to the community interested in the relevant technology.
Treated all submissions as public disclosures.
Allowed users to freely copy content.
Had a search tool that would have retrieved the Benson article in response to relevant search terms such as vote, voting, ballot or election.
The court noted that regardless of whether the website containing the article was indexed (through search engines or otherwise):
A person of ordinary skill interested in electronic voting would have been aware of it as a forum for discussing electronic voting technologies.
The website's own search functions and an interested researcher's diligence were enough to ensure that the article would be found.
After determining that the Benson article qualified as a prior art printed publication, the court held claim 49 invalid as obvious in light of the article because the article's content would have made the voting method of claim 49 obvious to a person of ordinary skill in the art of computerized voting technologies.
This decision is notable for providing patent litigants with guidance on establish online references as prior art printed publications. In particular the decision is significant for holding that indexing is not an absolute prerequisite to establishing online references as printed publications within the prior art.