Suffolk Technologies, LLC v. Aol Inc.

  United States Court of Appeals
      for the Federal Circuit
                ______________________

         SUFFOLK TECHNOLOGIES, LLC,
               Plaintiff-Appellant,

                           v.

                      AOL INC.,
                      Defendant,

                          AND

                   GOOGLE INC.,
                  Defendant-Appellee.
                ______________________

                      2013-1392
                ______________________

    Appeal from the United States District Court for the
Eastern District of Virginia in No. 12-CV-0625, Judge T.
S. Ellis, III.
                 ______________________

                Decided: May 27, 2014
                ______________________

    JOEL L. THOLLANDER, McKool Smith, P.C., of Austin,
Texas, argued for plaintiff-appellant. With him on the
brief were DOUGLAS A. CAWLEY and DANIEL L. GEYSER, of
Dallas, Texas; and RODERICK G. DORMAN, of Los Angeles,
California.
2                      SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.



   STEVEN A. HIRSCH, Keker & Van Nest LLP, of San
Francisco, California, argued for defendant-appellee.
With him on the brief were ROBERT A. VAN NEST, CHRISTA
M. ANDERSON, and MATTHIAS A. KAMBER.
                ______________________

    Before RADER, Chief Judge, PROST and CHEN, Circuit
                         Judges.
PROST, Circuit Judge.
    Suffolk Technologies, LLC (“Suffolk”) appeals from
the summary judgment of the United States District
Court for the Eastern District of Virginia holding certain
claims of Suffolk’s U.S. Patent No. 6,081,835 (“’835 pa-
tent”) invalid. Specifically, the district court held that
claims 1, 7, and 9 were anticipated by a Usenet news-
group post. Suffolk then stipulated that, in light of the
district court’s prior art, claim construction, and expert
testimony rulings, claim 6 was also anticipated. Upon
entry of final judgment, Suffolk appealed.
    We conclude that the district court correctly construed
the claims and properly granted summary judgment of
invalidity. Accordingly, we affirm.
                        BACKGROUND
     Suffolk owns the ’835 patent, which is directed to
methods and systems for controlling a server that sup-
plies files to computers rendering web pages. ’835 patent
col. 2 l. 58–col. 4 l. 10. The patent discloses using the
address of the referring web page to determine whether to
serve a file, and if so, which file. Id. The claims at issue
are independent claim 1 and dependent claims 6, 7, and 9.
Those claims read as follows:
    1. A method of operating a file server, said
    method comprising the steps of:
     receiving a request for a file;
SUFFOLK TECHNOLOGIES, LLC      v. AOL INC.                     3



        determining if the request includes a received
         identification signal identifying an originating
         file from which said request originated;
        comparing any said received identification signal
          with the one or more predetermined identifica-
          tion signals; and
        deciding which file, if any, is to be supplied in
         dependence upon said determining and compar-
         ing steps, and if in the deciding step it is decid-
         ed that a file is to be supplied, supplying said
         file.
Id. col. 7 ll. 30–42 (emphases added).
    6. A method as in claim 1 wherein said deciding
    step further comprises generating said supplied
    file.
    7. A method as in claim 1 wherein said request
    conforms to a hypertext transfer protocol.
Id. col. 8 ll. 1–4 (emphasis added).
    9. A method as in claim 1 in which said file serv-
    er is connected to the internet and wherein said
    request is received via the internet.
Id. col. 8 ll. 8–10.
    In June 2012, Suffolk sued Google Inc. (“Google”) for
infringing the ’835 patent. 1 Google responded by arguing,
among other things, that the asserted claims were antici-
pated by a newsgroup post. Specifically, on June 29,
1995—nine months before the priority date claimed for
the ’835 patent—Marshall C. Yount posted to the
comp.infosystems.www.authoring.cgi newsgroup a mes-



    1    Suffolk also sued AOL Inc., but those parties set-
tled in January 2013.
4                      SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.



sage entitled “How to tell which page called the script?”
He wrote:
    I am a newbie at this CGI [common gateway in-
    terface] stuff, so this question might seem ridicu-
    lous (I did look in the FAQ and on some web pag-
    pages). I have this script that will be called from
    one of 18 pages. Depending on which page it was
    called from, the output will be different. Is there
    any environment variable that will tell me this, or
    do I have to externally pass information to the
    script.
J.A. 4805.
    A college student named Shishir Gundavaram replied
with the following post (the “Post”):
    Look at the CGI environment variable
    HTTP_REFERER. In Perl, you can do something
    like this:
    #!/usr/local/bin/perl
    $referer = $ENV{‘HTTP_REFERER’};
    print “Content-type: text/plain”, “\n\n”;
    if ($referer =~ /abc\.html/) {
      print “A link in abc.html called this docu-
    ment.”, “\n”;
    } elsif ($referer =~ /efg\.html/) {
      print “A link in efg.html called this docu-
    ment.”, “\n”; }
    else {
      print “A link in ”, $referer, “ called this doc-
    ument.”, “\n”;
    }
SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.                    5



      exit(0);
Id.
    After construing the claims and excluding testimony
from Suffolk’s validity expert, the district court granted
Google’s motion for summary judgment, holding that
claims 1, 7, and 9 were anticipated by the Post. Suffolk
Techs. LLC v. AOL Inc., 942 F. Supp. 2d 600, 602 (E.D.
Va. 2013) (order construing claims); J.A. 29 (order grant-
ing summary judgment). Suffolk then stipulated to
summary judgment of anticipation of claim 6 in light of
the district court’s prior art and claim construction rul-
ings. J.A. 2 (Final Judgment).
    Suffolk timely appealed. We have jurisdiction pursu-
ant to 28 U.S.C. § 1295(a)(1).
                         ANALYSIS
                  I. Claim Construction
     Suffolk appeals the district court’s construction of the
claim term “generating said supplied file.” According to
Suffolk, the district court’s construction, in combination
with the court’s prior art and summary judgment rulings
“effectively ensured that [claim 6] would be invalidated as
well.” Appellant’s Br. 4.
    Claim construction is a question of law that we review
without deference. Lighting Ballast Control LLC v.
Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1276–77 (Fed.
Cir. 2014) (en banc); Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). In construing
claims, this court relies primarily on the claim language,
the specification, and the prosecution history. Phillips v.
AWH Corp., 415 F.3d 1303, 1314–17 (Fed. Cir. 2005) (en
banc). After considering this intrinsic evidence, a court
may also seek guidance from extrinsic evidence such as
expert testimony, dictionaries, and treatises. Id. at 1317–
18.
6                     SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.



    Suffolk argues that the district court erred in constru-
ing the claim term “generating said supplied file” as
“creating or tailoring a file, as distinct from selecting an
existing file, in dependence upon the received identifica-
tion signal.” Suffolk Techs., 942 F. Supp. 2d at 602 (em-
phasis added). Suffolk’s position is that the generated file
could depend on the content of the requesting web page
and not just the received identification signal. According
to Suffolk, the district court committed three fundamental
errors in coming to a different conclusion.
    First, Suffolk argues that the language of the claims
themselves does not support the district court’s construc-
tion. But a review of the claim language reveals the
weakness of this position.
    Claim 1’s deciding step depends upon the preceding
determining and comparing steps, both of which in turn
depend upon a “received identification signal.” Thus,
claim 1’s determining, comparing, and deciding steps all
reference, directly or indirectly, a “received identification
signal.”
     All claim 6 does is add a “generating said supplied
file” limitation to claim 1’s deciding step. Neither claim 1
nor claim 6 references any variables or mechanisms for
conveying information about the requesting page other
than the “received identification signal.” And, the undis-
puted construction of “identification signal”—“digital
information that identifies the source, origin, or location
of a file”—says nothing about the content of the request-
ing page.
    Thus, the only variable actually listed in the claims
that the generated file could depend on is the received
identification signal and not the content of the requesting
web page. Counter to Suffolk’s assertion, the language of
the claims does support the district court’s construction.
SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.                    7



    Second, Suffolk argues that the specification implicit-
ly defines “generating said supplied file” and that the
district court erred in ignoring that implicit definition.
Suffolk lists several excerpts from the specification that it
argues supports its position that the generated file could
depend on the content of the requesting page. But when
viewed in context, those excerpts actually support the
district court’s construction. For example, Suffolk points
to the statement that information can be “tailored in
dependence upon the current web page being displayed by
the browser.” ’835 patent col. 4 ll. 5–6. That excerpt is
reproduced with context below. Suffolk’s excerpt is itali-
cized and the most important context is bolded.
    In addition to the possibility of controlling access
    to image or sound, or other high bandwidth files,
    the referrer details transmitted with the file re-
    quest may inform the server of the web page from
    which a file request is being made. Thus, if a
    HTML file is requested from a web page, the
    server is able to identify from which web
    page the HTML file request is made and cus-
    tomize the HTML file accordingly. For in-
    stance, if the browser requests a HTML file and
    generates a web page which includes details of a
    company, the details which are to be displayed can
    be tailored in dependence upon the current web
    page being displayed by the browser which could
    for instance be financial information.
’835 patent col. 3 l. 62–col. 4 l. 7 (emphases added).
    Another of Suffolk’s excerpts with context follows.
    [T]he HTML file sent to the browser can be cus-
    tomised in dependence upon the web page from
    which the request for a new web page was made.
    In this embodiment the server runs an application
    which takes in the referrer address and gen-
    erates a new HTML file.
8                     SUFFOLK TECHNOLOGIES, LLC     v. AOL INC.



Id. col. 6 ll. 37–41 (emphases added).
    These passages, when taken in full, describe two basic
steps: (1) identifying from which web page the request is
made; and (2) customizing an HTML file accordingly.
Importantly, the first step is not identifying the content of
the requesting page. Arguably, it is possible that the
server could separately match the received identification
signal with content known to be on that requesting page,
but such matching is not described or claimed. And in
that case, the generated file would still be most accurately
described as depending on the received identification
signal and not the requesting page’s content.
    Thus, the specification, when viewed in context, sup-
ports the district court’s construction that “generating
said supplied file” depends on the received identification
signal and not the content of the requesting web page.
     Third, Suffolk argues that the district court’s con-
struction effectively excludes the preferred embodiment
that this claim language was intended to cover. But this
argument fails when the entire description of the pre-
ferred embodiment is considered. When considered in
full, it is clear that the embodiment uses the referrer
address to generate the correct file. See ’835 patent col. 3
l. 67–col. 4 l. 2 (“[T]he server is able to identify from which
web page the HTML file request is made and customise
the HTML file accordingly.”) (emphases added); see also
id. col. 3 l. 36–40. The district court’s construction does
not exclude the preferred embodiment.
    We have considered Suffolk’s remaining arguments
regarding the district court’s claim construction and find
them unpersuasive. Accordingly, we affirm that construc-
tion.
                  II. Summary Judgment
   Suffolk also appeals the district court’s grant of sum-
mary judgment of invalidity of claims 1, 7, and 9, and
SUFFOLK TECHNOLOGIES, LLC     v. AOL INC.                 9



several underlying rulings.
    The district court’s grant of summary judgment is re-
viewed de novo. Grober v. Mako Prods., Inc., 686 F.3d
1335, 1344 (Fed. Cir. 2012); Bruckelmyer v. Ground
Heaters, Inc., 445 F.3d 1374, 1377 (Fed. Cir. 2006).
Summary judgment is appropriate if, viewing the evi-
dence in the light most favorable to the non-moving party,
the movant shows that there is no genuine dispute as to
any material fact and the movant is entitled to judgment
as a matter of law. Fed. R. Civ. P. 56; Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 255 (1986).
    According to Suffolk, the district court erred by (1)
holding that the Post is a printed publication and thus
prior art, (2) holding that there were no triable issues
concerning the Post’s accuracy and reliability, (3) exclud-
ing testimony of Suffolk’s validity expert, and (4) granting
summary judgment, even in light of those rulings. We
address each purported error in turn.
                  A. Printed Publication
    As stated, Suffolk argues that the district court erred
in holding that the Post is a printed publication under
§ 102. 2
    “Whether an anticipatory document qualifies as a
‘printed publication’ under § 102 is a legal conclusion
based on underlying factual determinations.” SRI Int’l,
Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed.
Cir. 2008) (citation omitted); see In re Klopfenstein, 380



   2   Google contends that Suffolk waived the argu-
ment that the Post is not a printed publication under
§ 102. Because the district court clearly recognized,
considered, and ruled on the issue, we disagree. See
Holmer v. Harari, 681 F.3d 1351, 1356 n.3 (Fed. Cir.
2012).
10                   SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.



F.3d 1345, 1347 (Fed. Cir. 2004) (“Where no facts are in
dispute, the question of whether a reference represents a
‘printed publication’ is a question of law.”) “Because there
are many ways in which a reference may be disseminated
to the interested public, ‘public accessibility’ has been
called the touchstone in determining whether a reference
constitutes a ‘printed publication’ bar under 35 U.S.C.
§ 102(b).” SRI Int’l, Inc., 511 F.3d at 1194 (quoting In re
Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A given
reference is ‘publicly accessible’ upon a satisfactory show-
ing that such document has been disseminated or other-
wise made available to the extent that persons interested
and ordinarily skilled in the subject matter or art exercis-
ing reasonable diligence, can locate it.” Id. (quoting
Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378
(Fed. Cir. 2006)); see In re Cronyn, 890 F.2d 1158, 1160
(Fed. Cir. 1989) (“[D]issemination and public accessibility
are the keys to the legal determination whether a prior
art reference was ‘published.’” (quoting Constant v. Ad-
vanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir.
1988), cert. denied, 488 U.S. 892 (1988))).
     Suffolk argues that the Post should not be considered
a printed publication for essentially two reasons. Accord-
ing to Suffolk, the Post’s audience was not those of ordi-
nary skill in the art and locating the Post would be too
difficult.
    As to the first argument, Suffolk contends that the
Usenet newsgroup was populated mostly by “beginners,”
not those of ordinary skill in the art. Suffolk bases this
claim on Yount’s comment that he was a “newbie” and
that “this question might seem ridiculous.” J.A. 4805.
And Gundavaram did state that, at the time of the post,
“Most of these people who are using these newsgroups
were beginners.” J.A. 5132. But Suffolk’s argument is
unpersuasive for two reasons. First, Suffolk seems to
misunderstand the level of ordinary skill in the art at that
time. According to Gundavaram, there were no courses or
SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.                   11



books concerning CGI at the time of the Post in 1995, and
he learned about CGI through self-study. Second, the
record indicates that those of ordinary skill in the art
actually were using such newsgroups. At the time, only
people with access to a university or corporate computer
could use newsgroups, a subset of people more likely to be
skilled in the art. Suffolk’s own validity expert, Dr.
Rhyne, used newsgroups. Gundavaram clearly used the
newsgroup here, and he ultimately wrote a book on CGI.
Further, Yount’s question would only seem “ridiculous” if
the other subscribers had more skill in the art than he.
Accordingly, Suffolk’s first ground for attacking the
printed publication is unpersuasive.
    As to the second ground, Suffolk argues that the Post
was not sufficiently publically accessible to be considered
a printed publication. Suffolk points out that the Post
was non-indexed and non-searchable. And although the
newsgroup posts did have titles, they could only be sorted
by date.
    But this argument is also unpersuasive for two rea-
sons. First, Suffolk overstates the difficulty in locating
the Post after publication. Usenet newsgroups were
organized in a hierarchical manner, as evidenced by the
name       of     the     newsgroup          at      issue—
comp.infosystems.www.authoring.cgi.        Thus, someone
interested in CGI could easily locate a list of posts in this
newsgroup.
     Second, and the ultimate reason Suffolk’s argument
fails, a printed publication need not be easily searchable
after publication if it was sufficiently disseminated at the
time of its publication. See, e.g., In re Klopfenstein, 380
F.3d at 1350–51. Thus, the question becomes whether the
Post was sufficiently disseminated. We hold it was, the
facts here being similar to cases holding sufficient dissem-
ination occurred. For example, in Klopfenstein we held a
poster board presentation displayed for several days at an
12                    SUFFOLK TECHNOLOGIES, LLC    v. AOL INC.



industry association meeting to be sufficiently dissemi-
nated to be “publically accessible,” and thus a printed
publication. Id. Similarly, in Massachusetts Institutes of
Technology v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir.
1985), we held a paper delivered orally at a conference,
where at least six copies of the paper were distributed, to
be a printed publication. The present case is not, as
Suffolk contends, more similar to SRI International where
we held factual issues precluded summary judgment of
invalidity. 511 F.3d at 1194. There, we did “not find
enough evidence in the record to show that [a file posted
on an FTP server] was publicly accessible and thus a
printed publication under 35 U.S.C § 102(b).” Id. at 1195.
The FTP server was technically open to the public but the
file “was not publicized or placed in front of the interested
public.” Id. at 1197. We analogized those facts to “placing
posters at an unpublicized conference with no attendees.”
Id. Such analogy is inapplicable here, where dialogue
with the intended audience was the entire purpose of the
newsgroup postings. And, indeed, the Post elicited at
least six responses over the week following its publication
discussing the efficacy of Gundavaram’s proposal. Many
more people may have viewed the posts without posting
anything themselves.
    Thus, we conclude the Post was sufficiently dissemi-
nated to those of ordinary skill in the art to be considered
publically accessible, and Suffolk’s second ground for
attacking the printed publication fails.
    We therefore affirm the district court’s holding that
the Post is a printed publication for purposes of § 102.
          B. The Post’s Accuracy and Reliability
    Suffolk next argues that summary judgment was in-
appropriate because “serious questions undermining the
reliability and accuracy of the Gundavaram post should
have been submitted to the jury.” Appellant’s Br. 33.
According to Suffolk, a juror may decide to not credit “a
SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.                 13



second-hand reproduction of an old Usenet post” that was
admittedly altered. Id. Suffolk points out that each post
was altered to bear a timestamp of 12:00 a.m. and that
the email addresses were altered to protect users from
spambots. Suffolk then argues that these small altera-
tions “could suggest to a jury that other parts of the post
may also have been inaccurate or altered.” Id. at 35.
    This argument, however, is unpersuasive. Suffolk
presents no affirmative evidence challenging the Post’s
material facts. And Gundavaram himself authenticated
the Post, testifying that he recognized “the style of my
writing,” “certain stylistic things in the code,” and “cer-
tainly the e-mail address that I wrote from.” J.A. 6192–
93.
    In sum, the asserted evidentiary weaknesses in the
Post are insufficient, without more, to create a genuine
issue of material fact. We therefore affirm the district
court’s holding that there were no genuine issues of
material fact concerning the Post.
         C. Suffolk’s Validity Expert Testimony
     Suffolk next argues that the district court improperly
excluded testimony from its validity expert, Dr. Rhyne.
In his initial report and deposition, Dr. Rhyne offered no
opinion on whether the Post anticipated claims 1, 7, or 9
of the ’835 patent. Dr. Rhyne did, however, opine that the
Post did not anticipate claim 6. After the district court
issued its claim construction, Dr. Rhyne filed a supple-
mental report in which he stated for the first time that
the Post did not anticipate claim 1. The district court
excluded that portion of the supplemental report, and
Suffolk appeals that exclusion. We review the district
court’s decision to exclude Dr. Rhyne’s testimony for
abuse of discretion. See Nader v. Blair, 549 F.3d 953, 963
(4th Cir. 2008); S. States Rack & Fixture, Inc. v. Sherwin-
Williams Co., 318 F.3d 592, 595 (4th Cir. 2003).
14                   SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.



    Suffolk argues that Dr. Rhyne’s new opinion concern-
ing the anticipation of claim 1 should be permitted be-
cause the district court “chang[ed] the landscape” when it
construed the term “identification signal” as “digital
information that identifies the source, origin, or location
of a file.” Appellant’s Br. 41. For context, Suffolk’s pro-
posed construction of “received identification signal” was
“a signal identifying an originating file from which said
request originated.” J.A. 12074.
    The crux of the district court’s decision to exclude the
testimony is that, concerning the anticipation of claim 1,
Dr. Rhyne went from having no opinion before claim
construction to having an opinion after claim construc-
tion. The intervening claim construction, according to the
district court, did not warrant such a change. J.A. 2552
(hearing on motion to strike Dr. Rhyne’s testimony) (“I
was surprised, to the extent that they are not tethered
and depend upon Markman constructions. . . . [Dr.
Rhyne] testified that he had no opinion one way or the
other, it didn’t matter. That doesn’t depend on claim
construction. He had no opinion at all. So I am going to
strike it.”).
     We do not conclude that every time a validity expert
goes from having no opinion concerning a claim to having
an opinion that such supplemental testimony should be
excluded. We do, however, conclude that the district court
did not abuse its discretion in doing so here, where Dr.
Rhyne did opine on the validity of dependent claim 6 in
his initial report and the district court’s construction did
not vary greatly from the parties’ proposals. We therefore
affirm the district court’s exclusion of portions of Dr.
Rhyne’s testimony.
       D. Appropriateness of Summary Judgment
    Suffolk next argues that, even if the Post is properly
considered and Dr. Rhyne’s testimony is properly exclud-
ed, summary judgment of invalidity should not have been
SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.                  15



granted. According to Suffolk, there are genuine factual
issues concerning whether the Post disclosed every limita-
tion in the contested claims. Specifically, it argues that
“the exemplary files disclosed[—abc.html—]were not in
the context of a URL and did not provide additional
information (beyond “abc.html”) communicating source,
origin or location.” Appellant’s Br. 42. Without expert
testimony, however, Suffolk’s position is mere attorney
argument. And here, those attorney arguments are
insufficient to undermine the credible testimony from
Google’s expert that “abc.html” is an identification signal.
    Further, Suffolk argues broadly that summary judg-
ment is inappropriate because Suffolk “can still attack
Google’s affirmative case (on cross-examination or other-
wise).” Appellant’s Br. 43. But these broad statements,
without evidentiary support, are insufficient to make
summary judgment inappropriate. To hold otherwise
would improperly empower cross-examination with the
ability to defeat nearly all motions for summary judg-
ment. We refuse to endorse such a broad position.
    We have considered Suffolk’s remaining arguments
regarding the district court’s grant of summary judgment
and find them unpersuasive.
    Google bears the burden to show that there are no
genuine issues of material fact. It has met that burden.
And Suffolk’s attorney arguments, with no affirmative
evidence, are insufficient to undermine Google’s showing.
Thus, we affirm the district court’s summary judgment of
invalidity. 3




   3    Suffolk also appeals the district court’s exclusion
of Suffolk’s damages expert. Having affirmed the sum-
mary judgment of invalidity, we need not and do not
reach this issue.
16                   SUFFOLK TECHNOLOGIES, LLC   v. AOL INC.



                      CONCLUSION
    We conclude that the district court did not err in its
claim construction or its grant of summary judgment of
invalidity. We thus affirm the district court.
                      AFFIRMED