“The CAFC noted that ‘[a]lthough no one piece of evidence definitively establishes Bradford’s public accessibility prior to May 9, 2012, we find that the evidence, viewed as a whole, sufficiently does so.’”
Last week the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in VidStream LLC v. Twitter, Inc., in which the PTAB held VidStream’s patent claims unpatentable as obvious over the applied prior art. In particular, the CAFC affirmed the PTAB’s holding that Twitter properly established an earlier filing date of a reference based on evidence submitted in a reply brief.
Inter Partes Review Proceedings
VidStream was the assignee of U.S. Patent No. 9,083,997 (the ’997 patent), which was titled “Recording and Publishing Content on Social Media Websites” and was directed to methods and systems including “computer programs encoded on a computer storage medium, for recording and publishing content on social net- working websites and other websites.” The application for the ‘997 patent was filed on May 9, 2012. Twitter filed two inter partes review (IPR) petitions with the PTAB asserting that the claims were obvious in view of a book authored by Anselm Bradford and Paul Haine (Bradford) in combination with other references.
VidStream argued that Bradford was not available as a reference because it was published December 13, 2015. Twitter filed a reply brief and presented documents including copy of Bradford’s Certificate of Copyright Registration showing an effective date of registration on January 18, 2012 and a date of first publication of November 8, 2011. Twitter also filed copies of archived webpages from the Internet Archive, showing the Bradford book listed on a publicly accessible website on November 28, 2011, and website pages dated December 6, 2011, showing the Bradford book available for purchase from Amazon in both an electronic Kindle Edition and in paperback. In addition, Twitter filed a Declaration of “an expert on library cataloging and classification,” who declared that Bradford was available at the Library of Congress in 2011 and cited a Machine-Readable Cataloging (MARC) record that was created and modified 2011. The PTAB found that the November 8, 2011 date of first publication, stated in the Copyright Office’s Registration Certificate, supported the 2011 copyright date of the copy of Bradford obtained from the Library of Congress and was “consistent with Bradford being for sale on Amazon in December 2011,” and “indicate[d] it was published by an established publisher.” Thus, the PTAB held that Bradford was available as a reference and held that the claims were unpatentable in light of Bradford in combination with other cited references. VidStream appealed to the CAFC.
Introduction of Evidence in a Reply Brief
VidStream argued that the PTAB erred in accepting and considering the documents that Twitter provided with its replies and that the Bradford pages that were filed with Twitter’s petitions were published December 13, 2015, rather than the earlier dates indicated in the documents provided by Twitter. VidStream also argued that the PTAB violated its own rules in considering evidence that was not provided with the IPR petitions, but only with the replies, because the USPTO’s Trial Guide for inter partes review requires that “[P]etitioner’s case-in-chief” must be made in the petition, and “Petitioner may not submit new evidence or argument in reply that it could have presented earlier.” In particular, VidStream asserted that the PTAB erred by relying on evidence that was first submitted with Twitter’s reply briefs and that the evidence did not show that the Bradford book was accessible before the filing date of the ‘997 patent.
Twitter responded that the documents filed with its replies were appropriate in view of VidStream’s challenge to Bradford’s publication date. In support of its position, Twitter cited the PTAB rules and Anacor Pharm., Inc. v. Iancu, in stating “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner, or if it is used to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.” The CAFC agreed with the PTAB and concluded that it was correct to permit “both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”
The Bradford Publication Date
In reviewing the PTAB’s findings with respect to Bradford’s publication date, the CAFC considered: (1) “Bradford’s front matter, including its copyright date and indicia that it was published by an established publisher”, (2) “the copyright registration for Bradford”, (3) “the archived Amazon webpage showing Bradford could be purchased on that website in December 2011”, and (4) expert testimony showing “creation and modification of MARC records for Bradford in 2011.” The CAFC noted that “[a]lthough no one piece of evidence definitively establishes Bradford’s public accessibility prior to May 9, 2012, we find that the evidence, viewed as a whole, sufficiently does so.”
Thus, the CAFC affirmed the PTAB’s ruling that Bradford was prior art against the ’997 patent. Given that VidStream did not challenge the PTAB’s decision of obviousness if Bradford was available as a reference, the CAFC affirmed the unpatentability of the claims of the ’997 patent.