While a fact-specific analysis, an internet posting on a website probably qualifies as prior art if “an interested researcher [could have found it] using that website’s own search functions and applying reasonable diligence.” In the age of Google, this is probably not a difficult standard to satisfy going forward. In an interesting aside, the court also noted the following in dismissing a small side issue, which I found interesting: “It is well established that a human being cannot constitute a ‘means’ within the scope of § 112, ¶ 6.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1300 (Fed. Cir. 2005) (internal quotations omitted). This would seem to be a useful case to cite if you are ever faced with a 101 rejection asserting that certain “means” can be performed mentally or otherwise by a person, rather than requiring a machine.
Background / Facts: The patent at issue is directed to automated systems and methods for voting in an election, featuring a self-verification procedure in which a copy of an electronic ballot is printed out and double-checked (e.g., by displaying it to the voter). An article written prior to the patent (the “Benson article”) describes the same idea, but was only available from an online periodical, back in the dark ages of the internet before Google indexing became routine.
Issue(s): Whether the Benson article qualifies as a prior art “printed publication” as defined by 35 U.S.C. § 102(b) when it was only available via a non-indexed, online periodical.
Holding(s): Yes. While indexing is a relevant factor in determining whether a reference was made “sufficiently accessible to the public interested in the art,” it is not dispositive. 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.” Here, unrebutted testimony in the record indicated that (1) the online periodical was well known to the community interested in the relevant field (electronic voting technologies), (2) the hosting website contained more than 100 articles relating to electronic voting, (3) submitters treated their submissions as public disclosures, (4) users were able to freely and easily copy its content, and (5) the website included an internal search tool that would have retrieved the Benson article in response to search terms such as “vote,” “voting,” “ballot,” and/or “election.”