By John Marlott

Just because a document is archived on the Internet Archive’s Wayback Machine® does not necessarily qualify it as prior art for an IPR challenge.

What is the Wayback Machine®?  The USPTO describes it this way:

The Wayback Machine® is a digital library maintained by the Internet Archive (a non-profit organization) for viewing information on archived digital Internet webpages. Simply, the Wayback Machine® uses software programs, known as crawlers, to surf the Internet and automatically store copies of Web objects (Web pages, images, videos, etc.), preserving these objects as they exist at the point and time of capture. These Web objects are stored as Web captures with the capture time/date in the form of a time stamp and the URL of the original website of capture. Accordingly, the Wayback Machine® provides the ability to view and browse Internet information that may no longer be available on the original website.

MPEP 2128.II.E.  According to the Internet Archive, “the Wayback Machine is named in reference to the famous Mr. Peabody’s WABAC (pronounced way-back) [time] machine from The Rocky and Bullwinkle cartoon show” in the 1960s.

IPRs are limited to patentability challenges based on prior art patents or printed publications. 35 U.S.C. § 311. When an IPR petitioner relies on a non-patent printed publication, the petitioner bears the burden “to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 16 (PTAB Dec. 20, 2019) (precedential).  Two recent PTAB decisions demonstrate that carrying this burden may require the petitioner to do more than merely identify an archived webpage available via the Wayback Machine®.  First Solar Inc. v. Rovshan Sade, IPR2023-00827, Paper 13 (Nov. 16, 2023) & IPR2023-00881, Paper 13 (Nov. 16, 2023).

In the First Solar IPRs, the prior art document relied on by the petitioner was an installation guide for a commercial solar tracker product purportedly published on a third party company website in December 2005.  To show this product installation guide was a publicly available printed publication, the petitioner submitted a standard affidavit from the Internet Archive verifying that a website page corresponding to the installation guide had been archived by the Wayback Machine® in December 2005.  IPR2023-00227, Paper 13 at 12-17.

The PTAB denied institution, however, and sided with the patent owner’s argument that the petitioner failed to sufficiently show that the product installation guide qualified as a printed publication as of December 2005.  In particular, the petitioner did not provide any evidence that interested persons exercising reasonable diligence would have been able to locate that document in December 2005:

[T]he present case lacks any testimonial evidence that a person interested in solar trackers or solar panel assemblies would be independently aware of the web address for [the product installation guide] or even of the company or its products.  In other words, there was no evidence that the ordinarily skilled artisan would know of [the installation guide] or its web address.

IPR2023-00227, Paper 13 at 18.  According to the PTAB, while the archiving of the product installation guide on the Wayback Machine® may have demonstrated that this document was “technically accessible” as of December 2005, that did not make it “publicly accessible” so as to qualify as a prior art printed publication—and “public accessibility requires more than technical accessibility.”  Id. at 18.  In this regard, a reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”  Id. at 14 (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).

“[E]lectronic documents”—like documents posted on a website—“may be publicly accessible if they were indexed or catalogued, or if there were other tools for customary and meaningful research.”  Id. at 14.  Here, other than pointing to the Wayback Machine®, the petitioner “provided no evidence that [the product installation guide posted on a company website] was disseminated to the interested public before the critical date” in December 2005.  Id. at 18.

The PTAB cited the petitioner’s failure to “offer evidence, or even argument, that [the product installation guide] webpage was ‘indexed . . . (through search engines or otherwise)’ and thus locatable by a search engine” in December 2005.  Id. at 18.  While the current-day Wayback Machine® may be indexed or searchable by URL, the petitioner had not offered evidence that “a query of a search engine before the critical date [in December 2005], using any combination of search words, [ ] would have led to [the product installation guide] appearing in the search results.” Id.  Without such evidence, the PTAB “question[ed] whether the record contains sufficient evidence that ‘a person of ordinary skill could have reasonably found the website and then found the reference on that website.’”  Id. at 18-19 (quoting Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1381 (Fed. Cir. 2012)).

We have previously written about potential dangers in relying on Wayback Machine® prior art evidence in an IPR.  These recent PTAB decisions denying institution present another cautionary tale.

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John Marlott brings more than 30 years of intellectual property law experience to his role as lead counsel in IP disputes for Jones Day clients. He focuses on high-stakes district court and ITC patent litigation, post-grant patent proceedings before the PTAB, and appeals to the U.S. Court of Appeals for the Federal Circuit.