The Patent Trial and Appeal Board (PTAB) in an inter partes review: Keysight Technologies, Inc. and Palo Alto Networks, Inc. v. Centripetal Networks, LLC found a rule set file used by a network security program to be a “printed publication” under § 102(b). This determination played a role in the PTAB’s conclusion that certain claims of U.S. Patent No. 10,567,343 (the ‘343 Patent) were unpatentable.
The ‘343 Patent, owned by Centripetal Networks, is directed towards “filtering network data transfers” to protect against data exfiltration. The petitioners, Keysight Technologies, and Palo Alto Networks, challenged the validity of all claims of the ‘343 Patent. The PTAB instituted an inter partes review and issued its final decision after a thorough examination of the evidence and arguments presented by both parties.
The petitioner argued that the “Emerging Threats” reference was publicly accessible and thus qualified as a printed publication under § 102(b). They provided several key points to support their argument:
- Internet Archive’s Wayback Machine: The petitioner presented evidence that Emerging Threats was available on the Internet Archive’s Wayback Machine as of December 2, 2010. This demonstrated that the document was accessible to the public before the effective filing date of the ‘343 Patent.
- Well-Known Clearinghouse: Emerging Threats was described as a well-known independent clearinghouse for Snort rules, which are used as part of an open-source network intrusion detection and prevention system. The petitioner argued that persons skilled in the art would have known to look at Emerging Threats for relevant rules.
- Expert Testimony: An expert for the petitioner, testified that based on his experience, the Emerging Threats rules appeared to be true copies of rules that existed in 2010. He also detailed that Emerging Threats was known to those skilled in the art.
The patent owner contended that the petitioner had not proven that Emerging Threats was publicly accessible:
- Technical Accessibility vs. Public Accessibility: The patent owner argued that mere technical accessibility via the Wayback Machine did not equate to public accessibility. They emphasized that public accessibility requires more than just being technically available online.
- Recognition and Comprehension: The patent owner argued that skilled artisans would not have recognized the relevance of Emerging Threats without further research or experimentation. They claimed that the document was not meaningfully indexed or searchable in a way that would allow skilled artisans to locate it easily.
- Expert Testimony: The patent owner’s expert argued that persons interested and ordinarily skilled in the art would not have been able to locate Emerging Threats using reasonable diligence.
The PTAB sided with the petitioners, finding that Emerging Threats was indeed publicly accessible and qualified as a printed publication under § 102(b). The board’s analysis included several key points:
- Public Accessibility: The PTAB determined that interested parties could locate and download rule sets from Emerging Threats’ website. They noted that Emerging Threats was known to those skilled in the art and provided sufficient functionality for users to search and download relevant rules.
- Distinguishing from Other Cases: The PTAB distinguished this case from others where references were not considered printed publications due to lack of meaningful indexing or searchability. They found that Emerging Threats provided adequate means for skilled artisans to locate and use its contents.
- Supporting Evidence: The PTAB found petitioners’ expert testimony persuasive and corroborated by other evidence, including the Internet Archive’s Wayback Machine copy and testimony from another expert who confirmed awareness and use of Emerging Threats.
Takeaway: It is critical that petitioners be thoughtful about proving up all non-patent documents that make up invalidity grounds to prevent avoidable adverse findings regarding printed publication status of references.
