POST-GRANT REVIEW T
he internet is a massive information repository that never sleeps. As quickly as the information is generated, it is
also changing or disappearing as websites are modified or
deleted. However, the Internet
Archive’s Wayback Machine can counteract the impermanence of the internet, turning it into the proverbial elephant that never forgets. Te Wayback Machine is an online service
maintained by the Internet Archive, a non- profit organisation that allows users to visit archived versions
of websites. While not
originally intended for legal use, the Wayback Machine has become a strong tool in a patent litigation toolbox. Tis is because prior art is particularly important for challenging patent claims and the Wayback Machine enables attorneys to find prior art web pages that are no longer accessible on the internet. Over time, these archived websites have
become readily accepted as evidence in federal district court proceedings. In the area of patent litigation in particular, accused infringers have proffered web pages provided through the machine as prior art publications to challenge asserted patent claims. Courts have accepted this evidence, and the Patent Trial and Appeal Board (PTAB) seems to be following suit, making the machine an attractive post-grant challenges at Trademark Office (USPTO).
tool in the US Patent and
What is the Wayback Machine? Te Wayback Machine scours the internet on a daily basis and archives web content that would otherwise be lost whenever a website is changed or closed down, with the goal being to archive every website at least every two months. Once archived, these websites are forever accessible simply
by visiting the Wayback Machine
website. It has archived more than 452 billion web pages since 1996 and, as of December 2014, contained almost nine petabytes of data—a veritable wealth of prior art possibilities. It is important to realise that the machine
cannot be relied on to establish the date on which a web page was created; it can only show what a web page disclosed on the date that the web page was archived. Other limitations to the machine include archived pages that contain broken links, are missing graphics, or are otherwise incomplete. Te Wayback Machine is unable to process
certain JavaScript elements. Also, it archives a web page only when web crawlers visit the page and not every time it is updated. Of course, the more popular a web page, the more frequently it will be archived—for example Te New York Times website is archived multiple times on a daily basis.
It can take between six and 14 months for a
website that was crawled to become accessible in the database. It was established in 1996, so websites that disappeared before then are, obviously, not included. Last, passcode- protected sites cannot be archived and website owners may opt out of the archive process altogether.
Post-grant challenges With the passing in 2011 of the America Invents Act (AIA), parties can use various post-grant proceedings to challenge US patents before the PTAB. In the first year of the AIA’s enactment, the USPTO expected about 300 to 400 post- grant challenge petitions to be filed. In 2013 alone approximately 800 petitions
were filed, and the total number of petitions filed since the AIA’s inception
to parties looking to challenge currently
hovers around 2,700. Consequently, post- grant proceedings have become particularly attractive
competing patents. Various types of post-grant challenges are
available—inter partes review, covered business method review, and post-grant review—and the availability of each type depends on the patent challenged. One thing they all have in common, however, is that they provide the ability to challenge patent claims using prior art patents and printed publications. A reference qualifies as a printed publication
if it “has been 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”. Under the 1952 Patent Act, an invention may
not be patented if it was described in a printed publication before the invention date. Under the AIA, a patent application with an effective filing date on or aſter March 16, 2013 may not be patented if it was described in a printed publication before the effective filing date of the patent application. A web page may constitute a printed
publication and qualifies as prior art as of the date it was posted and made publicly available. However, the rapidly changing nature of internet postings—the average web page has a life of 100 days—can make it virtually impossible to know exactly what was disclosed to the public, and when. Te beauty of the Wayback Machine is that
it forever freezes in time a web page that it captures. If that captured web page was once publicly available before a prior art critical date, then it does not matter that the web page may no longer exist, as the attorney can still access the prior art web page to add it to the patent challenge.
42 World Intellectual Property Review Annual 2015 World Intellectual Property Review November/December 2014
www.worldipreview.com
IMAGES: JOHAN SWANEPOEL /
SHUTTERSTOCK.COM
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