November 30, 2018Newsletter

This Week at the Board - November 30, 2018

PTAB Finds WayBack Machine Archive Entry Insufficient Evidence That Publication Was Publicly Available

In Nautilus, Inc. v. Icon Health and Fitness Inc., the Board determined that claims of Icon’s patent directed to its Six-Pak fitness machine were not unpatentable because Nautilus was unable to prove that Icon’s Six-Pak owner’s manual qualified as prior art. Nautilus asserted that the Six-Pak manual was prior art because it was published and available online over one year prior to the patent’s priority date. As evidence of the availability and publication date, Nautilus used an affidavit that cited fitness supplier TuffStuff’s website as found on the WayBack Machine, which acts as a digital archive for websites. 

In instituting the Petition, the Board noted the merit of Patent Owner’s arguments that there was insufficient proof showing the Six-Pak manual was publicly available, but determined that the Petitioner had made a sufficient threshold showing. The Board invited the parties to further develop the evidentiary record on whether the Six-Pak manual was publically available, but no further evidence was presented throughout the proceeding.

The Board determined that the Petitioner failed to present evidence that persons interested in exercise equipment knew of the websites where the Six-Pak manual was available or would have been able to locate it through reasonable diligence. Even assuming that the TuffStuff website was available for anyone to view, the Board stated that “public accessibility requires more than technical accessibility.” The board also determined that there was no evidence that persons interested in exercise equipment knew of the websites or of the Six-Pak, such that they would have reason to search for the relevant information.

The Board offered a number of ways that the Petition could have “shored up” the evidence on public accessibility, including: provide evidence that the TuffStuff was known among those interested in exercise equipment as an exercise equipment supplier; that Six-Pak or TuffStuff’s website was locatable through keyword searching on the internet during the prior art period; that TuffStuff’s website received traffic from interested persons in the art during the prior art period; that Six-Pak was actually viewed or downloaded from TuffStuff’s site during the prior art period by interested persons in the art; or that Six-Pak was distributed in some other way during the prior art period, such as accompanying sales of the Six-Pack trainer.

A link to the decision is found here.

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