Board: info isn’t
Publicly accessible
On “Wayback Machine”

The Patent Trial and Appeal Board (PTAB or Board) has denied institution of a petition for inter partes review (IPR) because the petitioner failed to show that its primary asserted prior reference, available through the Internet Archive, was “publicly accessible before the critical date.”

The case is First Solar, Inc. v. Rovshan Sade.

First Solar filed a petition for IPR of two claims of patent owner Rovshan Sade’s patent, titled “Solar Tracker.”

The patent relates to “a free standing solar tracker with a rotating panel assembly to track the movement of the sun during the day.” The solar tracker includes a panel assembly comprising one or more solar panels, a base, a support frame, and an actuator for rotating the solar panel.

As the Board noted,

A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

A “person having ordinary skill in the art” or “person of ordinary skill in the art” is sometimes called a “PHOSITA” or “POSITA.”

The issue of obviousness is resolved based on:

• the scope and content of the prior art;
• any differences between the claimed subject matter and the prior art;
• the level of ordinary skill in the art; and
• when in evidence, objective evidence of nonobviousness.

In assessing the level of ordinary skill in the art, factors to be considered include:

type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.

An expert for the petitioner contended that an ordinarily skilled artisan in relation to the patent at issue

would have had a bachelor’s degree in mechanical engineering or equivalent with 2–3 years of experience involving design, development, and manufacturing of support and mounting structures for solar trackers, with additional education substituting for experience and vice versa.

The Board noted that in an IPR, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”

The Board also noted that

[T]he burden is on the petitioner 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.

A prior 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.

For example, “for manuscripts or dissertations stored in libraries, courts may inquire whether a reference was sufficiently indexed, catalogued, and shelved.”

One of the prior art references at issue, Wattsun, “is evidenced at least by its reference on a webpage verified by the Internet Archive as being [publicly] available at as early as December 2, 2005.”

As an expert explained,

the Internet Archive is “a website that provides access to a digital library of Internet sites and other cultural artifacts in digital form.”… . [The] Internet Archive has created a service known as the Wayback Machine,” which “makes it possible to browse more than 450 billion pages stored in the Internet Archive’s web archive.”

The patent owner asserted that Wayback Machine records were unreliable and that the petitioner hadn’t shown that Wattsun was indexed in a manner that would allow a POSITA searching for the information to locate it.

The Board agreed, saying:

there was no evidence that the ordinarily skilled artisan would know of Wattsun or its web address. Nor does Petitioner offer evidence, or even argument, that Wattsun’s webpage was “indexed . . . (through search engines or otherwise)” and thus locatable by a search engine.

Thus, the court concluded, “public accessibility requires more than technical accessibility.”

The decision shows that using the Wayback Machine to show the existence of prior references may not be a viable strategy for those seeking to challenge patents.

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