Undated Screenshot Insufficient to Prove Public Accessibility of GitHub Repository

By Justice Hubbard, Robby Breetz, and Josh Nightingale –

In AO Kaspersky Lab v. Open Text Inc., the PTAB denied inter partes review after determining that a screenshot of a GitHub repository was insufficient to establish that a whitepaper posted to that repository qualified as a printed publication. IPR2023-00895, Paper 7 at 9 (Dec. 7, 2023) (“Decision”). This IPR involves U.S. Patent No. 10,284,591 (“the ’591 patent”), directed to systems and methods that monitor, block, and report bugs or malware hidden in computer programs. Id.

The petitioner, AO Kaspersky Lab, argued that a whitepaper authored by Fratric (“Fratric”) anticipated or rendered obvious all the claims of the ʼ591 patent. Decision at 2. The PTAB noted that “the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication,” and “[t]he key inquiry is whether or not a reference has been made publicly accessible.” Decision at 8-9 (quoting Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) and In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004)).

In arguing for public accessibility, AO Kaspersky argued that Fratric was published “to GitHub, an Internet hosting service . . . that is commonly used to host opensource and other public software projects.” IPR2023-00895, Paper 1 at 16 (Apr. 28, 2023) (“Petition”). AO Kaspersky submitted an annotated screenshot of the GitHub page that included the file name, a “commit” date of August 26, 2012, and a repository visibility setting of “Public.” Decision at 9. Thus, it argued that Fratric was published before the critical date of January 27, 2015.

In response, the patent owner, Open Text Inc., submitted a screenshot from the Wayback Machine indicating that Fratric was first indexed on the Wayback Machine on June 11, 2018. Id. at 9 n.4. The PTAB noted that the Wayback Machine screenshot did not prove that the repository was not available earlier than June 11, 2018, because the repository could have existed but just not have been crawled until that date. Id. The Wayback Machine screenshot, however, “indicate[s] that Petitioner’s publication date cannot be corroborated by the Wayback Machine.” Id.

Ultimately, the PTAB found that the petitioner’s “screenshot [wa]s insufficient to establish that Fratric was a printed publication prior” to the filing date of the ʼ591 patent. First, there was no evidence that the screenshot was of material that existed prior to the ʼ591 filing date because there was no citation for the screenshot, which itself was undated, and it did not appear to be taken from an exhibit. Id. at 9. Second, GitHub’s repository visibility setting can be changed at any time and there was no evidence that the “Public” setting shown in the screenshot had not changed over time. Id. at 9-10. Thus, the Board found that the undated screenshot was not probative of the visibility status before the filing date. Id. at 10. Third, the PTAB found that the commit date of August 26, 2012, did not solve this issue. Id. While a commit date records any file additions or changes on GitHub, any changes would still not be accessible to the public if the visibility setting were set to private. Id.

The PTAB denied institution because AO Kaspersky failed to prove that Fratric qualified as a printed publication and thus failed to establish a reasonable likelihood that at least one claim of the ʼ591 patent was unpatentable. Id. at 10.

Takeaway:

Practitioners should continue to exercise caution in attempting to prove public accessibility of a reference. In the specific instance of using a GitHub repository, the visibility may be changed over time. Just because a repository is set to public today does not mean that the repository was publicly accessible prior to the critical date.