Admission of an evidence obtained through the use of an "app" to prove web content that has been removed

Friday, 13 of September of 2019

On May 31, 2019, the 5th section of the Court of Appeal or Zaragoza issued a Decision (case no. 450/2019) in which it has been resolved, among others, the nullity action filed by PIHER SENSORS & CONTROLS, SA (hereinafter, PIHER) against the Spanish patent owned by ARAGONESA DE COMPONENTES PASIVOS SA. (hereinafter ACP) consisting of a remote control.

The Judgment issued by the Commercial Court No. 2, Zaragoza, dismissed the defendant by which it acquitted ACP and confirmed the validity of its patent. In response, PIHER filed an appeal based on the lack of evaluation of the evidence provided by the Court of First Instance, in which the lack of novelty of the challenged patent was evidenced by the fact that it had been made accessible to the public prior to its application.

In order to prove this, as allowed under article 299.2 of the Civil Procedure Law, PIHER provided as evidence website content obtained through the WayBack Machine application - a non-profit North American website that uses software that keeps copies of web sites allowing access to removed or modified information.

In particular, PIHER provided (i) a catalogue published on PIHER's website in 2007, in which the product marketed prior to the application for the challenged patent appeared; a sworn statement from the patent administrator; and a notarial act attesting that the website had been consulted by a notary through the mentioned application.

The patent owner objected to the alleged lack of novelty, pointing out that the patent had been processed by the procedure of "prior examination" -without the plaintiff having filed observations or oppositions-, which entails the realization of a state-of-the-art search report. That report concluded that the claims making up the contested patent had not been made accessible to the public prior to its application.

Finally, the Chamber accepts the report carried out by the WayBack Machine application, which shows that the protected patent had been made accessible to the public prior to the application for that patent, so that it lacked novelty. In that sense, the appeal is upheld and, consequently, the contested patent is annulled.

This Judgment sets a precedent, since it is more and more frequent the contribution in the procedures of evidence obtained from public and free applications. It is important to point out that, in addition to facilitating the work of lawyers when it comes to providing evidence, the costs of the proceedings will be reduced.