Use of the Wayback Machine in IPR Is Under Attack

Written by: Stuart Nelson

One source of prior art commonly relied on in inter partes review proceedings is the "Wayback Machine." The Wayback Machine is an internet archive of webpages that are browsed by crawler programs and then stored and preserved as of the date that the pages are originally browsed by the crawlers. The Wayback Machine has been a source of prior art relied on by the Board in numerous IPR proceedings. Examples include: Crestron Electronics, Inc. v. Intuitive Building Controls, Inc., Case IPR2015-01460, slip op. at 12-22 (PTAB Jan. 14, 2016) (Paper 14); Par Pharmaceutical, Inc. v. Jazz Pharmaceuticals, Inc., Case IPR2015-00551, slip op. at 26-29 (PTAB Jul. 28, 2015) (Paper 19); and Electronics Arts Inc. v. White Knuckle IP, LLC, Case IPR2015-01595, slip op. at 4-5 (PTAB January 14, 2016) (Paper 11). The Board has also denied petitions that rely on the Wayback Machine, such as in Servicenow, Inc. v. Hewlett-Packard Co., Case IPR2015-00707, slip op. at 5-18 (PTAB August 26, 2015) (Paper 12), in which the Board found that the reliance on the Wayback Machine was not enough to show public accessibility under the facts of that case.

Parties typically support evidence from the Wayback Machine by a declaration from the Office Manager at the Internet Archive, which created the Wayback Machine. The Standard Affidavit used by the Office Manager can be found here.

The use of the Wayback Machine in IPRs has most recently come under attack in John Manville Corp. v. Knauf Insulation, Inc., Case IPR2015-01453. In that case, the Petitioner submitted the standard declaration of the Office Manager of the Internet Archive and the Patent Owner sought to depose the Office Manager. John Manville Corp. v. Knauf Insulation, Inc., Case IPR2015-01453, slip op. at 2-3 (PTAB March 14, 2016) (Paper 16). The parties requested authorization under 37 C.F.R. 42.52(a) to seek a subpoena from the requisite federal district court for the cross examination of the Office Manager. Id. at 1. The Board authorized the filing of a motion to seek the subpoena, but cautioned: "the motion must be very specific as to exactly what evidence the parties are seeking, and must show good cause before we will grant such a motion. This is of particular importance because Mr. Butler is an uninterested third-party witness, and a cross examination is a significant inconvenience in time and energy where he has already submitted what appears to be an appropriate attestation to his knowledge and actions with respect to the evidence at issue." Id. at p. 3.

The Board clearly did not want to authorize a fishing expedition, stating: "we will not lightly grant a motion for a subpoena for cross-examination of a third party with respect to admissibility where counsel simply concedes that they do not understand how the Wayback Machine works." Id. at 4. The Board then suggested an alternate strategy, stating: "A patent owner should consider, thoughtfully, whether it wants to take on the burden of establishing inadmissibility as opposed to arguing in an opposition that petitioner has failed to sustain its burden to prove its substantive merits case." Id. at 4-5.

Practitioners seeking to use archived webpages should consider the Board's handling of such evidence in these and other post-grant proceedings. While the Wayback Machine has been frequently used and accepted in a number of IPR proceedings, it is not yet free from challenge especially under particular facts of a given case.