United States: Examiners May Rely On Incomplete Prior Art References To Establish Obviousness

In In re Enhanced Security Research, LLC, No. 13-1114 (Fed. Cir. Jan. 13, 2014), the Federal Circuit affirmed the Board's decision rejecting as obvious the claims of U.S. Patent No. 6,119,236 ("the '236 patent") owned by Enhanced Security Research, LLC ("ESR").

The '236 patent, as amended, claims a computer security device and method for preventing unauthorized access to a local computer network.  Specifically, the '236 patent claims a security device that protects a local network by (1) monitoring communications throughout the network to detect suspicious communication patterns, (2) assigning weighted values to any threatening activity detected, and (3) blocking communications based on their assigned weight value using a firewall.

During a third-party requested ex parte reexamination, the examiner rejected all claims of the '236 patent as obvious based on two potential prior art references:  (1) the manual of a software product called NetStalker ("the Manual"), and (2) a scholarly article ("Liepins").  The NetStalker software, similar to the '236 patent, protects local networks from attempted security breaches by monitoring network communications, identifying attempted security breaches, and automatically blocking any unauthorized access attempts.  Liepins describes a computer system capable of detecting newly identified anomalous activity by automatically generating, weighing, and applying a set of decision rules.  The Board affirmed the examiner's obviousness rejections of the amended claims, and ESR appealed to the Federal Circuit.

The Federal Circuit affirmed.  The Court held that substantial evidence supported the Board's obviousness determination that "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."  Slip op. at 8.  According to the Court, the NetStalker software teaches responding to attempted security breaches based on user-defined severity parameters, and while the Manual does not disclose the automatic assignment of different weights to different types of attempted security breaches, Liepins fills this gap by disclosing a systematic rule-based framework capable of automatically identifying exceptional network activity.  The Court also held that ESR had waived arguing the separate patentability of any of the dependent claims by failing to argue these claims separately under distinct subheadings as required under 37 C.F.R. § 41.37.

"We conclude that the PTO's own rules permit the consideration of selected portions of prior art references so long as the missing portions are not necessary to fully understand the submitted portions."  Slip op. at 16.

The Federal Circuit next rejected ESR's contention that the Board erred in finding that the Manual constituted publicly available prior art.  According to the Court, even "relatively obscure documents qualify as prior art so long as the public has a means of accessing them."  Id. at 13 (citing In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)).  The Court held that substantial evidence supported the Board's finding, including a May 1996 date on the Manual's title page, a declaration from the CEO of the company that produces NetStalker stating that members of the public could have obtained a copy of the Manual, and evidence of NetStalker advertisements published in 1995.

The Federal Circuit also rejected ESR's argument that the Manual should not have been considered because it was missing pages, and thus could not be considered as a whole.  The Court first distinguished Panduit Corp. v. Dennison Manufacturing Co., 810 F.2d 1561 (Fed. Cir. 1987), in which the district court had erred by stitching together an obviousness finding from discrete portions of prior art references without considering the references as a whole.  The Court also relied on (1) 37 C.F.R. § 1.510, the primary regulation governing reexamination, and specifically § 1.510(b)(3), as well as MPEP § 2218, which permits a requester to submit only the "pertinent parts" of any non-English translation; and (2) 37 C.F.R. § 1.105 and MPEP § 704.14(a), which permit patentee submissions of just selected portions of an article over fifty pages, as was the Manual.  Thus, according to the Court, "the PTO's own rules permit the consideration of selected portions of prior art references so long as the missing portions are not necessary to fully understand the submitted portions."  Slip op. at 16.  And in this case, the Court concluded that nothing in the Manual suggested that the missing pages were necessary to understand the pertinent parts of the reference or contradicted the available portions on which the PTO relied. 

Finally, the Federal Circuit rejected ESR's argument that NetStalker was not invalidating prior art because ESR had conceived of the invention before the Manual's publication and diligently reduced its invention to practice.  The Court held that the Board did not err in finding no showing of attorney diligence when, during the critical period—between May 1996, when the Manual became available, and October 7, 1996, when the patent application was filed—the prosecuting attorney had a few conversations with the inventor, conducted a prior art search, billed for under thirty hours of work, and drafted the patent application. 

Accordingly, the Federal Circuit affirmed the Board's decision rejecting the claims of the '236 patent as obvious.

Judge O'Malley dissented.  Judge O'Malley believed that the Board should have refused to rely on the Manual because it was facially incomplete, and thus could not be considered as a whole, and because it was obtained from an interested party who never explained why the reference was submitted in an incomplete form or what the missing portions discussed.  According to Judge O'Malley, "due process concerns arise when, as here, a complete version of a reference is unavailable to a patentee, but the PTO relies on it with no explanation from the provider as to why it is incomplete."  O'Malley Dissent at 6.  Judge O'Malley also disagreed that substantial evidence supported a finding that the Manual was publicly accessible because the declaration on which the Board relied lacked evidence that the version of NetStalker discussed in the Manual was ever advertised or sold before the critical date, and because the Manual bore several indicia of a draft document.  Finally, Judge O'Malley took issue with the majority's obviousness decision, accusing the majority of filling in gaps in the Board's analysis with its own alternative analysis.

This article previously appeared in Last Month at the Federal Circuit, February 2014.

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