Patent Law Forum
How does an inter parties review (IPR) petitioner prove authenticity of a printed publication?
About the Author: Mr. Sheerin is a California licensed patent attorney having represented clients accused of patent infringement in Federal District Court as well as through Inter Partes Review (IPR) at the US Patent Office. A few of Mr. Sheerin's recent results may be viewed here:
There are two issues concerning authenticity of printed publications that are not patent publications (issued patents and published patent applications are deemed authentic). Examples of non-patent publications include sales catalogs published by a company in the industry, documents disseminated at a trade show, or a technical paper published in a technical journal, such as IEEE. An IPR petitioner must prove the publication date is authentic, and that the publication was publicly available to those skilled in the art at the time the patent application at issue was filed. In general, the Federal Rules of Evidence regarding hearsay (i.e., FRE 801-807) and related case law control the issues of authenticity in IPR proceedings.
To qualify as prior art, the publication date of a printed publication must predate the priority date (filing date) of the patent at issue. A copyright date printed on the publication may help, but is typically insufficient to prove the authenticity of the publication date. If it can be shown that the publication date was computer generated, then this is not considered hearsay (See Commonwealth v. Davis, 487 Mass. 448, 465 (2021)). The exception to hearsay (FRE 803 and 804) may be argued if available; otherwise, the publication date is typically proven through a declaration of a witness having first hand knowledge of the publication date. For example, an employee of a company may assert through a declaration that they were responsible for, and in fact assisted with publishing a sales catalog for a particular company.
In order to qualify as prior art, a publication must have been available to those skilled in the art at the time the patent application was filed. In other words, even if the publication date is not hearsay (e.g., computer generated), proof of public availability is still required. Similar to proving the publication date, proof of public availability is typically offered in the form of a declaration from a witness having first hand knowledge, such as an employee of a company who asserts through a declaration that they were responsible for disseminating a sales catalog through a website, trade show, or otherwise.
Website Documents and the Wayback Machine (archive.org)
A webpage is considered a printed publication that may be used as prior art against the patent at issue. In addition, a printed publication, such as a sales catalog, may be offered for download through a company website. The Wayback Machine is an online digital archive of web pages run by the Internet Archive, a nonprofit library in San Francisco, California. Using the Wayback Machine, the state of a website on a particular date may have been archived (not all webpages were archived). If the webpage has been archived on a particular date, a witness (e.g., attorney) can take a screenshot of the webpage and sign a declaration attesting to how the webpage was found using the Wayback Machine. There are some district courts that take official notice of a webpage available through the Wayback Machine, and therefore the IPR petition should request the PTAB to take official notice. In addition, you can order an affidavit from archive.org for a small fee ($280) that can be submitted as an exhibit with the IPR petition, or offered in reply to the patent owners preliminary response if the authenticity of the publication is challenged. Here is the link to request the affidavit: