In its Aug. 17 decision in Valve Corporation v. Ironburg Inventions Ltd., the Federal Circuit appears to have cleared the way for district courts to take judicial notice of Wayback Machine captures as evidence of prior-art printed publications.
As many readers of this blog will know, the Wayback Machine is an online digital archive of webpages. The archive is maintained by a nonprofit library called the Internet Archive. For patent challengers, the Wayback Machine is a useful tool for finding prior-art printed publications that potentially invalidate asserted patents. It is especially useful because the Wayback Machine maintains archival versions of websites and webpages that may no longer be functioning today.
In the Valve case, both parties appealed from an IPR decision that some claims of Ironburg’s video-game controller patents were invalid while others were not. One of Valve’s primary prior-art references was “a printed copy of an online review of an Xbox 360 controller.” Valve Corp. v. Ironburg Inventions, Ltd., No. 2020-1315, 2021 WL 3628664, at *3 (Fed. Cir. Aug. 17, 2021). Ironburg argued that Valve failed to authenticate the online review. Id. at *4. But the court sided with Valve, following a number of district courts that have taken judicial notice of Wayback Machine captures. Id. at *7.
It wasn’t always this way. Other district courts, in patent and non-patent cases, have been slow to embrace the Wayback Machine. Early case law required Wayback Machine captures to be authenticated with “testimony or sworn statements” not only from an Internet Archive representative, but also from the owner of the website that the Wayback Machine captured. United States v. Gasperini, No. 16-CR-441, 2017 WL 3140366, at *7 (E.D.N.Y. July 21, 2017); Novak v. Tucows, Inc., No. 06-CV-1909, 2007 WL 922306, at *5 (E.D.N.Y. Mar. 26, 2007). Courts quickly moved on from that rule, however, and became receptive to affidavits from an Internet Archive representative “with personal knowledge who can attest that the [Wayback Machine] operates to create an unaltered copy of a website as it appears on a given day.” Gasperini, 2017 WL 3140366 at *7 (quotation omitted).
Soon, the rules loosened even further. “[P]ersuasive authority” arose suggesting that “an affidavit or testimony may not strictly be necessary.” Klayman v. Judicial Watch, Inc., 299 F. Supp. 3d 141, 146–47 (D.D.C. 2018). Other courts found Internet Archive affidavits from different cases sufficient to authenticate Wayback Machine captures. Pohl v. MH Sub I, LLC, 332 F.R.D. 713, 718 (N.D. Fla. 2019). This momentum led to district courts in Florida and Virginia, respectively, taking judicial notice of Wayback Machine captures of dental photographs, id. at 716, and environmental regulations, S. Envtl. Law Ctr. v. Council on Econ. Quality, 446 F. Supp. 3d 107, 113 n.6 (W.D. Va. 2020).
In light of the Valve case, judicial notice now appears to be the rule rather than the exception. Now more than ever, patent challengers should look to the Wayback Machine as a valuable source of potential prior art.
But all is not lost for patent owners, who should be aware of the Wayback Machine’s limitations. The Internet Archive admits, for example, that “[n]ot every date for every site archived is 100% complete.” As a result, “the specific dates available for subpages of a given site will vary” and “images that appear on [a] printed page may not have been archived on the same date as the [corresponding] HTML file.” So even if a court takes judicial notice of a Wayback Machine capture, the capture is not necessarily prior art.