The two screenshots at issue were two online press releases dated October 15, 2001 and March 1, 2003, respectively. The screenshots thus appeared, at least facially, to have been publicly accessible before the relevant critical date of February 23, 2004. Notably, the board’s decision indicates that the petitioner had relied on the same screenshots in a prior proceeding concerning a related patent, in which the board had instituted the requested IPR. This might explain why, in the new proceeding, the petitioner made little effort to cite any evidence substantiating the press release’s purported publication dates. However, the prior institution decision came a few months before the board issued its precedential ruling in Hulu, LLC v. Sound View Innovations.
In Hulu, the board’s Precedential Opinion Panel clarified a petitioner’s initial burden for establishing the “printed publication” status of a prior art reference. “At the institution stage,” the board explained, “the petition must 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.” In other words, the petitioner has the initial burden to show “a reasonable likelihood” that the relied-upon reference in fact was publicly accessible at the necessary time.
Applying this standard, the board in Louisiana-Pacific concluded that the petitioner had not met its initial burden with respect to the two screenshots. The board first observed that the press release dated October 15, 2001 actually bore a copyright date of 2003, while the press release dated March 1, 2003 bore an “ambiguous” copyright date of “1998-2009.” The board stressed that the petitioner made no attempt to explain these discrepancies or otherwise reconcile the publication dates with the “seemingly inconsistent” copyright dates. The board next noted that the petitioner had failed to “submit any testimony to support a finding that either of these documents is a prior art printed publication.” Finally, the board emphasized the lack of evidence “in the record indicat[ing] that these screenshots were obtained from websites contemporaneously archived at the alleged time of publication, for example, by the Wayback Machine” (which, as the board observed, both it and the Federal Circuit “have relied on to validate websites as a source of prior art”).
The board thus ruled that the petitioner “failed to identify with particularity evidence sufficient to establish a reasonable likelihood that either [press release] was publicly accessible before the critical date.” As a consequence, the board did not consider the press releases—which underpinned one of the petitioner’s three asserted grounds of obviousness—in deciding the petition’s merits.
Implications: The Louisiana-Pacific decision highlights the need for both petitioners and patent owners to carefully consider the evidence regarding the public accessibility of website screenshots and other types of non-traditional prior art references. Neither party should assume that just because a reference was posted on the Internet, it necessarily will qualify as a “printed publication.” Instead, the petitioner should assess whether it needs to adduce additional evidence to substantiate the reference’s purported publication date. And the patent owner should assess whether it has an argument that the evidence cited in the petition is insufficient to satisfy the Hulu standard (even if the reference may have been publicly accessible at some point in time).