POST-GRANT REVIEW Te Wayback Machine broadens the universe
of prior art, making it an attractive tool for a patent challenger and a bigger concern for a patentee. It is therefore of interest how the PTAB treats prior art generated from the machine once it is submitted as evidence in post-grant proceedings. Te USPTO has previously accepted web
pages archived using the machine as prior art in ex parte prosecutions. Te PTAB seems to be following suit, typically accepting web pages archived using the machine as prior art in post- grant proceedings. One key difference between using the
Wayback Machine in prosecution and in post-grant proceedings, however, is that post- grant proceedings are governed by the Federal Rules of Evidence, whereas prosecution is not. Consequently, patent owners can challenge the authentication of the machine’s web pages. Tis is because, as printouts of
information, exhibits of archived web pages are generally not self-authenticating under the Federal Rules of Evidence. Declarations
from witnesses or attorneys
are generally insufficient to authenticate the machine’s web captures if the witnesses do not have personal knowledge of the archive’s contents. But one simple way to authenticate the archived website is by using an affidavit from the Internet Archive, which maintains the Wayback Machine website and therefore has personal knowledge of the captured web pages. Te Internet Archive has readily cooperated
with requests for such affidavits. Tese affidavits verify that the web page captured is a true and correct copy of
the web page as originally
published. Tey also describe the process by which the Wayback Machine archives websites, how the archives can provide a snapshot of a website from various dates, and how the URL provided by the Wayback Machine indicates the archival date of the relevant capture. Indeed, the PTAB has found affidavits from the Internet Archive sufficient to authenticate machine- based exhibits. Tat being said, even without an affidavit
from the Internet Archive, the PTAB has been reluctant to exclude web captures in the machine as evidence, due to authentication issues. For instance, the PTAB found that a petitioner’s failure to obtain an affidavit authenticating captured web pages was not sufficient to exclude the archives. Te PTAB has also accepted declarations from a party’s expert witness and counsel attesting to exhibits being true and correct copies of the information published on the machine’s website as sufficient for authentication. Patent owners have also challenged whether archived web pages truly represent the
“PATENT OWNERS
HAVE ARGUED THAT THE PETITIONER MUST PROVIDE EVIDENCE
electronic
THAT PROVES A PERSON OF ORDINARY SKILL IN THE ART ACTUALLY ACCESSED THE WEB PAGE IN QUESTION.”
information that was publicly available at the time of archiving. Te PTAB has generally rejected such
challenges when evidence
suggests that at the time the web pages were archived, they were disseminated, or otherwise
would have been made available, to a person of ordinary skill in the art exercising reasonable diligence. In response, patent owners have argued the petitioner must provide evidence
that
that proves a person of ordinary skill in the art actually accessed the web page in question at the critical time point to qualify it as prior art. But this has been roundly rejected by the PTAB; a party needs only to provide sufficient evidence to demonstrate that the reference was disseminated publicly or was otherwise made available. Patent owners have
also raised hearsay
objections to machine-based evidence. But, typically, a web page capture is used to show that the description of a product or concept, which anticipates or
renders obvious the
challenged claims, was available as prior art; it is not used to show the truth of the information it conveys. Terefore, the PTAB has not found machine-archived web pages to be hearsay. In sum, machine web page captures can be
a powerful tool in a challenger’s arsenal. Tey provide a universe of prior art to petitioners in post-grant patent
challenges, but come
with some technological limitations—such as incomplete web pages or broken links. Te PTAB has so far readily accepted
Wayback Machine web pages as prior art. And while patent owners have yet to successfully exclude them as evidence, they should not be considered immune to all challenges under the Federal Rules just yet.
Deborah Sterling is a director in the biotechnology/chemical group at
Sterne,
Kessler, Goldstein & Fox. She counsels on patent procurement, exploitation and enforcement, representing clients in patent interferences, inter partes review and covered business method review proceedings, and in district court. She can be contacted at:
dsterlin@skgf.com
44 World Intellectual Property Review Annual 2015
Christopher Gallo is an associate in the litigation group at Sterne, Kessler, Goldstein & Fox. He concentrates on patent litigation, including matters before district courts and the International Trade Commission. He has also worked on patent re-examination, inter partes review and covered business method review proceedings. He contacted at:
cgallo@skgf.com
can be
World Intellectual Property Review November/December 2014
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140