A recent IPR decision suggests the Board is willing to consider at the institution stage hearsay and authentication issues related to whether a reference is publicly available. It is prudent for petitioners to include in initial petitions their best evidence of public availability (e.g., declarations from those with sufficient personal knowledge) because there may not be another opportunity to remedy evidentiary deficiencies.

To count as a prior art “printed publication,” a reference must be publicly accessible, which—according to Kyocera Wireless Corp. v. Int’l Trade Comm’n—means the 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.”

To show public availability, the petitioner in IPR2015-00707 relied on printouts from the Wayback Machine, which is a website that archives webpages as they have appeared on particular dates. The petitioner submitted an archived webpage that predated the patent’s priority date and contained links to other documents on which the petitioner relied as prior art. The linked-to documents, however, had different Wayback Machine archive dates, each of which post-dated the patent’s priority date. The majority found that an affidavit from a Wayback Machine employee failed to establish that the documents (as opposed to the linking webpage) were themselves actually available before the patent’s priority date.

The majority was similarly unpersuaded by the petitioner’s remaining evidence. It rejected as inadmissible hearsay copyright dates on the disputed documents. The majority likewise found unpersuasive statements that each document was available for download, noting that the documents also contained language imposing restrictions on dissemination. Having failed to show that the documents were publicly available before the challenged patent’s priority date, the majority denied institution because the petitioner’s sole invalidity theory rested on these documents being prior art.

The dissent—a rare occurrence in IPRs—acknowledged that the evidence failed to meet the petitioner’s ultimate burden but contended it was premature to apply that burden at the institution stage, which only requires a “reasonable likelihood” of ultimately prevailing. It observed the petitioner had not had an opportunity to respond to the hearsay issue, and noted that 37 C.F.R. § 42.64 provides for evidentiary objections to be raised after institution. The dissent also cited LG Electronics, Inc. v. Advanced Micro Devices, Inc., which held that evidence of public availability was sufficient at the institution stage where the reference had a copyright date and had been listed in an IDS. The dissent acknowledged that the Board has denied institution based on the public availability issue, but sought to distinguish these cases as involving a complete failure of proof on a key aspect of public availability.

Narrowly construed, this decision involves a dispute over whether the petitioner’s particular evidence of public availability cleared the hurdle for instituting review. Viewed more broadly, however, the decision raises the question of how high that hurdle ought to be, and in particular, how much evidence a petitioner can introduce after institution in response to specific objections.