The IPR process allows third parties to challenge patents by proving prior art through means like such as online content. What to consider when invalidating an existing patent using digital channels
Last Updated April 2024
Since it was established under the America Invents Act in 2012, the inter partes review (IPR) process has become a commonly used and effective avenue for challenging the validity of and invalidating an existing patent. Any third party can initiate an IPR and ask the Patent Trial and Appeal Board (PTAB) to review the patentability of one or more claims in a patent on the basis that the claims were obvious or not new because the "claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before" the claimed invention's effective filing date. (35 U.S.C § 102)
All of the foregoing – patents, printed publications, and "materials in public use, on sale, or otherwise available to the public"— are categories of prior art that can be relied upon in an IPR proceeding to support an invalidity claim. Both the latter catch-all category and the definition of "printed publication" have been broadly interpreted to extend beyond "printed" material to include any electronic publication, including content published on the internet such as images, videos posted on YouTube and other sites, social media posts, blogs, group chats, etc.
That means IPR petitioners frequently rely upon the results of internet searches to locate prior art. However, the ephemeral nature of online content, and social media posts in particular, presents significant evidentiary hurdles to authentication as well as the need to prove that the relied upon prior art was "publicly accessible" prior to the invention's filing date.
These two evidentiary challenges are most acute when the non-patent prior art being cited is no longer live on the internet such that even the most precise and diligent search may not uncover it. But even in cases where putative prior art is still live and accessible, a challenger must prove that it was so before the pre-filing date. In these cases, a reliable and widely accepted self-authentication tool such as Page Vault, which includes metadata such as posts' timestamps, can help litigants overcome objections to authenticity or public availability.
Meeting the "Public Accessibility" Requirement for Internet Content
The material must be considered "publicly accessible" to qualify as a "printed publication" that can be used as prior art in a patent validity challenge. As one court put it, "This rule is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone." A reference will be considered publicly accessible if it was "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."
When relying on non-patent prior art, courts have held that an IPR challenger 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."
According to the U.S. Patent and Trademark Office's (USPTO) Manual of Patent Examining Procedure (MPEP), "An electronic publication, including an online database or Internet publication (e.g., discussion group, forum, digital video, or social media post), is considered to be a 'printed publication'… provided the publication was accessible to persons concerned with the art to which the document relates."
As such, the public accessibility of now-deleted or currently live online material prior to the patent filing date is a threshold issue that a litigant must address to use such prior art in an IPR proceeding. The MPEP states, "Prior art disclosures on the internet or on an online database are considered to be publicly available as of the date the item was publicly posted. Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art."
Working with the Wayback Machine
An approach commonly used in invalidity proceedings is to leverage the Wayback Machine to discover online content that was available on websites in the past. This helps attorneys demonstrate that particular ideas were already in the public domain at a given point in time. Of course, there are risks to the Wayback Machine, and it is wise to help your client create their own archive of potentially relevant internet content. That said, use of the Wayback Machine will continue to be an important resource in patent law for the foreseeable future.
Page Vault can help to make collection of evidence shown on the Wayback Machine vastly more efficient. Our newly launched “Site Crawler” can be used to make one-click captures of all stored Wayback Machine pages for a particular domain. This helps attorneys save time and avoid human error.
General content capturing best practices
Patent challengers relying on online prior art must ensure that any screenshots they use to support their invalidity claim can be properly authenticated and accurately and reliably reflect the date on which it was published and publicly posted. This includes maintaining the chain of custody and including relevant metadata, such as timestamps of the pages containing the prior art.
Page Vault, the leading provider of legal online evidence collection and preservation solutions, provides patent challengers with the evidence needed to prove pre-filing publication dates for online prior art. By using a self-authenticating tool like Page Vault, patent attorneys can quickly capture authenticated screenshots of online content, including video and social media posts, along with all metadata needed to establish the admissibility of prior art in IPR proceedings.
Attorneys who use our services keep themselves out of the chain of custody, neutralizing any questions about tampering. We can provide an affidavit for any capture made in our system, whether in our web capture software or On Demand service. Our personnel can also serve as expert witnesses to explain Page Vault's technology and storage processes, helping to further support the authentication of content captures used in litigation.
To learn more about our capabilities and how we can serve as an indispensable patent litigation resource, contact Page Vault today.
