# 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

______________________

J OEL L. T HOLLANDER , McKool Smith, P.C., of Austin, Texas, argued for plaintiff

- appellant. With him on the brief were D OUGLAS A. C AWLEY and D ANIEL L. G EYSE R , of Dallas, Texas ; and R ODERICK G. D ORMAN , of Los Angeles, California.SUFFOLK TECHNOLOGIES
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S TEVEN A. H IRSCH , Keker & Van N e st LLP, of San Francisco, California, argued for defendant

- appellee. With him on the brief were R OBERT A. V AN N EST , C HRISTA M. A NDERSON , and M ATTHIAS A. K AMBER

.

______________________

Before R ADER , Chief Judge, P ROST and C HEN , Circuit Judges.

P ROST , 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 p atent”) invalid. Specifically, t he district court held that claims 1, 7, and 9 were anticipated by a Usenet new sgroup post. Suffolk then stipulated that, in ligh t 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.

B ACKGROUND

Suffolk owns the ’83 5 patent, which is directed to methods and systems for controlling a server that su pplies 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 c laim 1 and dependent c laims 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
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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 identific ation signals; and
deciding which file, if any, is to be supplied in

dependence upon said determining and compa ring steps, and if in the deciding step it is deci ded that a file is to be supplied, supplying said file.

Id. col. 7 ll. 30

– 42 ( empha se s 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 (empha si s added)

. 9. A method as in claim 1 in which said file ser ver 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,

a mong other things, that the asserted claims were antic ipated by a newsgroup post. Specifically, o n 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 me s1 Suffolk also sued AOL Inc., but those parties se ttled in January 2013.SUFFOLK TECHNOLOGIES
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sage entitled “How to tell which page called the script?” He wrote:

I am a newbie at this CGI [common gateway i nterface] stuff, so this question might seem ridic ulous (I did look in the FAQ and on some web pa gpa g es). 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 som e thing like this:
#!/usr/local/bin/perl
$referer = $ENV{‘HTTP_REFERER’};
print “C ontent

- type: text/plain”, “ \n\ n”;
if ($referer =~ /abc \ .html/) {
print “A link in abc.html called this doc ument.”, “ \ n”;
} elsif ($referer =~ /efg \ .html/) {
print “A link in efg.html called this doc ument.”, “ \ n”; }
else {
print “A link in ”, $referer, “ called this do cument.”, “ \ n”;
}SUFFOLK TECHNOLOGIES
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exit(0);

Id.

After construing the claims and excluding testimony from Suffolk’s validity expert, t he 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 gran ting 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 ru ling s. J.A. 2 (Final Judgment)

. Suffolk timely appealed. We have jurisdiction purs uant to 28 U.S.C. § 1295(a)(1).

A NALYSIS

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 com bination 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. 1 998) (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.SUFFOLK TECHNOLOGIES
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Suffolk argues that the district court erred in constr uing the claim term “generating said supplied file” as “creating or tail oring a file, as distinct from selecting an existing file, in dependence upon the received identific ation signal. ” Suffolk Tech s. , 942 F. Supp. 2d at 602 (e mphasis 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 themsel ves does not support the district court’s constru ction. But a review of the claim language reveals the weakness of this position.

Clai m 1’s deciding step depends upon the preceding determining and comparing steps, both of which in turn depend upon a “re ceived identification signal.” Thus, claim 1’s determining

, comparing , and deciding steps all reference, directly or indirectly, a “received identification signal.”

All cl aim 6 does is add a “generating said supplied file” limitation to claim 1’s decidi ng step

. Neither claim 1

n or claim 6 reference s any variables or mechanisms for conveying information about the requesting page other than the “received identification signal.” And, the undi sputed construction of “identification signal”

— “digital information that identifies the source, origin, or loca tion of a file ”— says nothing about the content of the reques ting page.

Thus , the only variable actually listed in the claims that the generat ed file could depend on is the received identification sig nal and not the content of the requesting web page. Counter to Suffolk’s assertion, t he language of the claims do es support the district court’s construction.SUFFOLK TECHNOLOGIES
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Second, Suffolk argues that the specification implici tly 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

argue s support s its position that the generated file could depend on the content of the requesting page. But when view ed in context, those ex cerp ts 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 l l. 5

– 6. That excerpt is reproduced with context below. Suffolk’s excerpt is ital icized 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 r equest 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 cu stom ize the HTML file accordingly

. For i nstance, 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 (emphas e s added).

Another of Suffolk’s excerpt s with context follows.
[T] he HTML file sent to the browser can be customi s ed 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 ge nerates a new HTML file

.SUFFOLK TECHNOLOGIES
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Id. col. 6 ll. 37

– 41 ( empha se s added ).

T hese passages, when taken in full, describ e two basic steps: (1) identif ying from which web page the request is made; and (2) cus tomizing 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 dependi ng on the received identification signal and not the requesting page’s content.
Thus, the specification

, when viewed in context, su pport s 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 co nstruction effectively excludes the preferred embodiment that this claim language was intended to cover. But this argument fails when the entire descriptio n o f the pr eferred 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 customi se the HTML file accordingly

. ”) ( emph ase s added ) ; see also id. col. 3 l. 36

– 40. T he 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 constru ction.

II . Summary Judgment

Suffolk also appeals the district court’s grant of su mmary judgment of invalidity of claims 1, 7, and 9, andSUFFOLK TECHNOLOGIES
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several underlying rulings.
The district court’s grant of summary judgment is r eviewed 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 ev idence 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 ju dgment 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 tri able issues concerning the Post’s accuracy and reliability, (3) exclu ding 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 d eterminations.” SRI Int ’ l, Inc. v. Internet Sec. Sys., Inc. , 511 F.3d 1186, 1192 (Fed. Cir. 2008) (cit ation omitted) ; see In re Klopfenstein , 380

2 Google contends that Suffolk waived the arg ument 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).SUFFOLK TECHNOLOGIES
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F.3d 1345, 1347 (Fed. Cir. 2004) (“ Where no facts are in dispute, the question of whether a reference represe nts 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 sho wing that such document has been disseminated or othe rwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exerci sing reasonable diligence, can locate it.” Id. ( quoting Bruckelmyer v. Ground Heaters, Inc.

, 445 F.3d 1374, 1378 (Fed. Cir. 2006)); s ee 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. A dvanced Micro

- Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988 ), cert. denied, 488 U.S. 892 (1988) )).

Suffolk argues that the P ost should not be considered a printed publication for essentially two reasons . Accor ding to Suffolk, the Post’s audience was not those of ord inary skill in the art and locating the P ost 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 orSUFFOLK TECHNOLOGIES
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books concerning CGI at the time of the Post in 1995 , a nd 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 subse t 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 consi dered 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 re asons. 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 intere sted 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 public ation. 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 disse mination occurred. For example, in Klopfenstein we held a poster board presentation displayed for several days at anSUFFOLK TECHNOLOGIES
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industry association meeting to be sufficiently dissem inated 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 print ed publication under 35 U.S.C § 102(b) .” Id. at 1195. T he FTP s erver 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

n ewsgroup postings. And, indeed, t he Post elicit ed at least six responses over the week following its publication discussing the efficacy of Gundavaram’s proposal . M any

more people may have viewed the posts without posting anything themselves.
Thus, we conclude t he Post was sufficiently dissem inated 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 i nappropriate 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 “aSUFFOLK TECHNOLOGIES
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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 alter ations “could suggest to a jury that other parts of the post may also have been inaccurate or altered.” Id. at 35.

T his argument , however, is unpersuasive . Suffolk presents no affirmative evidence challenging the Post’s material facts. And Gundavaram himself authenticated the P ost , testifying that he recognized “the style of my writing,” “ certain stylistic things in the code,” and “ce rtainly the e -m ail address that I wrote from. ” J.A. 619 2– 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 deposi tion, Dr. Rhyne offered no opinion o n whether the Post anticipated c laim s 1 , 7, or 9 of the ’835 patent

. Dr. Rhyne did , however, opine that the Post did not anticipate claim 6. After the district c ourt issued its claim construction, Dr. Rhyne f iled a suppl emental report in which he stated for the first time that the Post did not anticipate c laim 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).SUFFOLK TECHNOLOGIES
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Suffolk argues that Dr. Rhyne’s new opinion concer ning the anticipation of claim 1 should be permitted b ecause 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 pr oposed construction of “received identification signal” was “a signal identifying an originating file from which said request ori ginated.” J.A. 12074.

The crux of the district court’s decision to exclude the testimony is tha t , concernin g the anticipation of claim 1, Dr. Rhyne went from having no opinion before claim construction to having an opinion after claim constru ction

. T he 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 dep end upon Markman constructions.

. . . [Dr. Rhyne] testified that he had no opinion one way or the other, it didn’t matter. Th at 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 sh ould be excluded. We do, however, conclude that the district court did not abuse its discre tion 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

no t vary great ly 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 excluded, summary judgment of invalidity should not have beenSUFFOLK TECHNOLOGIES
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granted. According to Suffolk

, there are genuine factual issues concerning whether the Post disclosed every limit ation in the contested claims. Specifically, it argue s 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. W ithout expert testimony, however, Suffolk’s position is m ere attorney argument. And here, those attorney arguments are insufficient to undermine the credible testimony from Google’s expert that “ abc.htm l” is an identification signal.
Further, Suffolk argues broadly that summary jud gment is inappropriate becau se Suffolk “ can still attack Google’s affirmati ve case (on cross

- examination or othe rwise) .” 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 jud gment. We refuse to endorse such a broad position.

We have considered S uffolk’s remaining argument s regarding the district court’s grant of summary judgment and find them u npersuasive.
Google bear s the burden to show that there are no genuine issues of material fact. I t 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 su mmary judgment of invalidity, we need not and do not reach this issue.SUFFOLK TECHNOLOGIES
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C ONCLUSION

W e 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

. A FFIRMED