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Here’s What Happened:
Patents are new, useful and nonobvious. New means there’s no prior art. Prior art is any evidence that an invention or idea was already known when the inventor applied for a patent. Which brings us to a case decided by the Patent Trial and Appeal Board (“PTAB”).
Petitioner, Next Step Group, Inc., requested that the PTAB institute a proceeding to cancel Deckers Outdoor Corp.’s claims in a design patent for the upper parts of a shoe (the drawings at the top of the attached image). The basis for cancellation was prior art. Next Step had the burden of proof to show that a reference to the design was publicly accessible before the critical date of Deckers’ invention which was November 8, 2019.
Next Step found images all over the internet of shoes with similar designs (the color photos on the bottom of the attached image). So they took screen shots of the other shoes and submitted the webpages as evidence. The webpages were saved in January 2024.
The PTAB didn’t accept Next Step’s evidence. The simple existence of a webpage before the critical date was not enough. Next Step had to also prove that a person of ordinary skill could have found the website and specific reference. So, for example, Next Step’s screen shot from an Amazon webpage suggested the similar shoes were available in 2015. The webpage offered nothing more to support that date. Even the customer reviews of the product were dated after November 2019.
When discussing another example of Next Step’s failed evidence, the PTAB stated, “[W]ebpages are dynamic; product listings may be updated; and photographs of the products on the website may change over time. As such, a print out of a webpage from 2024 does not provide sufficient evidence of what was publicly available on the website years earlier prior to the critical date.”
The PTAB denied Next Step’s request to institute a proceeding to cancel Deckers’ patent.
WHY YOU SHOULD KNOW THIS: If you’re going to challenge a patent based on prior art, there are ways to find archival evidence of what a webpage looked like in the past.
Cited Authority: Next Step Group, Inc. v. Deckers Outdoor Corp., IPR2024-00525, Paper 16 (P.T.A.B. Aug. 6, 2024)