Archived Evidence from Wayback Machine and Prior Art Determinations for Printed Publications

In a recent decision by the U.S. Court of Appeals for the Federal Circuit[1], the appellate court affirmed the USPTO Patent Trial and Appeal Board’s final written decision that IPR petitioner Keysight had provided sufficient evidence that Centripetal’s patent claims were anticipated under 35 U.S.C. § 102 by a printed publication that was publicly available before the priority date of the patent. The proceedings involved commonly recurring issues relating to proving public accessibility of printed publications, including use of Wayback Machine® to provide time-stamped proof of such public accessibility. Ultimately, the Federal Circuit emphasized that a person of ordinary skill in the art (“POSITA”), with diligent effort, would have found the publicly available prior art reference since the reference was related to technical documentation from vendors in the technical field and was publicly available as supported by the Wayback Machine® archived evidence.

Background of the Case

Keysight Technologies, Inc. petitioned for inter partes review (“IPR”) of claims of U.S. Patent No. 10,284,526 B2 owned by Centripetal Networks, LLC. Among other grounds, Keysight asserted that the claims were unpatentable as being anticipated by and obvious over Cisco IronPort AsyncOS7.1 for Web User Guide (“IPUG”). The Board agreed.[2] A key issue, found by the Board in Keysight’s favor, was whether IPUG was available as prior art under 35 U.S.C. § 102.

On appeal to the Federal Circuit, Centripetal argued that IPUG does not qualify as a prior art reference since the Board erred in determining that IPUG was a printed publication that was publicly accessible before the patent’s priority date. The Federal Circuit disagreed and thus affirmed the Board’s final written decision as being supported by substantial evidence, more particularly, an archived version of the webpage housing IPUG dated before the Centripetal patent’s priority date, and an expert declaration explaining that a POSITA would have looked for and located product manuals and technical documentation from vendors in the field, including materials like IPUG.

Determinations Regarding “Printed Publication”

The Manual of Patent Examining Procedure (“MPEP”) § 2128 provides guidance on determining if a reference is a “printed publication” that is publicly accessible by stating the following:

A reference is proven to be a “printed publication” “upon a satisfactory showing that such document 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.”

Printed publications can also include discussion groups, forums, digital videos, or social media posts, which are publicly available as of the date the item was publicly posted. However, even publications that do not have a publication date may qualify as prior art if an archived version of the publication can be obtained from the Wayback Machine® Internet archive service.[3]

In § 2128.II.E of the MPEP, Wayback Machine® is described as a digital library that maintains archived versions of websites. The digital library stores time-stamped copies of web objects (web pages, images, videos, etc.) indicated by the year/month/day/hour/minute/second the capture was made and the URL of the original website. Upon time stamp capture, the web object is prima facia deemed to be publicly accessible as of the time stamp. Accordingly, Wayback Machine® is a service that allows the public to view archived records for a URL by closest available date.

MPEP § 2128.01 addresses the level of public accessibility noting that there are many factors that can be used to determine if a reference is sufficiently accessible to the public. Whether a reference was cataloged, indexed, and had search functionality are factors, however, they are not all necessarily required.  Each of these considerations was highlighted in the Board’s final written decision.

Accompanying the petition for IPR, Keysight filed and relied upon a sworn fact declaration of an administrator of Wayback Machine® noting how the system’s software formatted the time stamp for the URL on the archived site, as well as how the archived site manages archived URLs that contain hyperlinks to other URLs. The declarant noted the following:

“The Internet Archive assigns a URL on its site to the archived files in the format http://web.archive.org/web/[Year in yyyy][Month in mm][Day in dd][Time code in hh:mm:ss]/[Archived URL] aka an “extended URL”. Thus, the extended URL http://web.archive.org/web/19970126045828/http://www.archive.org/ would be the URL for the record of the Internet Archive home page HTML file (http://www.archive.org/) archived on January 26, 1997 at 4:58 a.m. and 28 seconds (1997/01/26 at 04:58:28).”
 

Using Wayback Machine®, Keysight provided time-stamped evidence of IPUG being publicly available as early as October 10, 2013, and available on Cisco’s web site as indexed on March 1, 2017, as shown below.

 

Centripetal had argued to the Board that IPUG had not been shown to be either searchable or indexed in a meaningful way to have allowed a POSITA to have discovered it. Centripetal relied on Federal Circuit precedent including Blue Calypso[1] and Acceleration Bay,[2] in which certain publications were held to not qualify as prior art under § 102. In Blue Calypso, a personal webpage was found to not be publicly accessible since the webpage was not indexed nor was there provided evidence of webpage views or downloads. In Acceleration Bay, a printed publication from a website was found to not be publicly accessible since the website was not indexed in a meaningful way nor did the website’s advanced search function return results that would have allowed a POSITA to find the publication.  The Board disagreed and noted that unlike the references at issue in Acceleration Bay and Blue Calypso, Cisco’s networking products would have been well known to a POSITA. In fact, since the IPUG reference was provided on Cisco’s website, the Board explained that the present case was more like Voter Verified[3] inwhich the Federal Circuit stated:

“The Risks Digest website was undisputedly open to any internet user by the critical date. Whether or not the website itself had been indexed by 1999 (through search engines or otherwise), the uncontested evidence indicates that a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest as a prominent forum for discussing such technologies. And upon accessing the Risks Digest website, such an interested researcher would have found the Benson article using that website’s own search functions and applying reasonable diligence.”

In addition to the sworn fact declaration of the Wayback Machine® administrator, the Board also relied on Keysight’s submitted expert declaration opining that a POSITA would have been prompted to look for product manuals and product descriptions from vendors concerning the relevant subject matter. The Board pointed out that the IPUG document is a resource to learn about the features of the appliance and accordingly “provides instructions for setting up, administering and monitoring the IronPort Web Security appliance.” The Board characterized IPUG as a document whose “purpose is ‘dialogue with the intended audience,’ [and] that purpose indicates public accessibility.”  

Consistent with the fact and expert declarations and the time-stamped evidence demonstrating that IPUG was publicly available prior to the Centripetal patent’s priority date, the Board held that IPUG qualifies as prior art since a POSITA would have had reason to navigate to Cisco’s home page and further investigate Cisco’s products, particularly web proxy devices such as the one described in IPUG. As such, the Board decided in favor of Keysight’s validity challenge. 

The Board’s Final Written Decision provides an illustration of a common evidentiary issue, that is, proving an “Internet only” reference to be a prior art printed publication under 35 U.S.C. § 102. While an Internet website or page that lacks an obvious publication date may not initially appear to qualify as a prior art reference, the Wayback Machine® Internet archive is a valuable tool that can be used by anyone to identify if, and when, the publication was available to the public.  Obtaining the right sworn fact and expert declaration testimony was the key to Keysight’s success.