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
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."
In the
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
[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
"[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
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
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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