imageIn Henry IV, Glenmore brags that he can “call spirits from the vasty deep.” Hotspur replies:

Why, so can I, or so can any man;

But will they come when you do call for them?

In Blue Calypso, LLC v. Groupon Inc., No. 15-1396 (Fed. Cir. Mar. 1, 2016), Groupon tried to summon a prior art reference from the Internet. But it wouldn’t come. The Internet proved too vasty.

Blue Calypso sued Groupon for infringing patents on a method for getting people to forward online ads to others. Groupon defended on the ground that a paper available on the Internet constituted a “printed publication” under section 102(b) of the Patent Act. The Federal Circuit described the reference — “Ratsimor” — as follows:

Ratsimor is a report co-authored by Dr. Olga Ratsimor who, at that time, was a graduate student in the Department of Computer Science and Engineering (Department) at the University of Maryland Baltimore County (UMBC). Dr. Ratsimor coauthored the report with other professors and students at UMBC, including Dr. Joshi, Groupon’s expert. In Ratsimor, the authors describe a program involving a software framework entitled “eNcentive,” which can be used to transmit advertising materials to users and allow those users to forward those advertisements to other users. The users who forward the advertisements are then rewarded with additional promotions and other compensation. Dr. Ratsimor made her report available via a hyperlink on personal webpage that she maintained while she was a student at UMBC.

Blue Calypso, slip op. at 27-28. The Patent Trial and Appeal Board ruled for Blue Calypso. The Federal Circuit affirmed. It held:

Groupon does not point to any evidence indicating that Ratsimor was viewed or downloaded. Further, . . . the present case lacks any testimonial evidence that a person interested in e-commerce and peer-to-peer marketing would be independently aware of the web address for Dr. Ratsimor’s personal page. In other words, there was no evidence that the ordinarily skilled artisan would know of Dr. Ratsimor’s personal webpage or its web address. Instead, Groupon argues that an internet search engine would have been able to locate the report. But that argument does not allow us to automatically infer that Dr. Ratsimor’s webpage was “indexed . . . (through search engines or otherwise)” and thus locatable by a search engine. See Voter Verified, 698 F.3d at 1381. The record is devoid of any evidence that a query of a search engine before the critical date, using any combination of search words, would have led to Ratsimor appearing in the search results.

Id. at 31.

The decision means that theoretical accessibility does not make a prior art reference a “printed publication” capable of invalidating a patent under section 102(b). Absent testimony that “a person interested in” the field of the invention “would be independently aware of the web address” for a link to the reference, the party seeking invalidation must show, at a minimum, that “a query of a search engine . . . would have led to [the prior art reference] appearing in the search results” — presumably on or somewhere close to the first page of results.

Finding a document that discloses the invention before the application date thus does not get you home free. Theoretical accessibility does not suffice. You must also show awareness of the place where the reference sits or ease of finding it.