ICYMI: Twitter gets a second chance to show a reference is prior art. #DoOver

VIDSTREAM LLC, Appellant v. TWITTER, INC., Appellee

2019-1734 2019-1735

November 25, 2020


Case Summary


This dispute involves U.S. Patent No. 9,083,997, which is directed to recording and publishing content on social media websites and is assigned to VidStream LLC.


Twitter challenged the ‘997 patent in two IPR petitions; all of the grounds for invalidity contained in these petitions relied on a book by Bradford et al. titled “HTML5 Mastery: Semantics, Standards, and Styling”. Bradford has a copyright date of 2011, but a page of the copy submitted in Twitter’s petitions states:


Made in the USA

Middletown, DE

13 December 2015


This date—more than three and a half years after the ‘997 patent’s May 2012 priority date—prompted patent owner VidStream to seek to exclude the Bradford reference.


This date—more than three and a half years after the ‘997 patent’s May 2012 priority date—prompted patent owner VidStream to seek to exclude the Bradford reference.


Challenger Twitter then filed replies with additional documents: these included a copy of Bradford obtained from the Library of Congress, that: (a) had a 2011 copyright date; and (b) did not have the “13 December 2015” text that was in the copy the social media company had supplied with its original petitions. Twitter also obtained from the Copyright Office a copy of Bradford's Certificate of Registration, which says the book was first published in November 2011 and was registered with the Copyright Office in January 2012.


VidStream complained that by allowing Twitter to provide additional evidence regarding Bradford’s actual publication date, the Board had violated the rules in the PTO’s IPR Trial Practice Guide, which both requires the "petitioner's case-in-chief" to be made in the petition, and prohibits the petitioner from “submitting new evidence or argument in reply that it could have presented earlier."


The PTAB then rejected VidStream’s attempt to exclude Bradford, instituted the IPRs, and held the challenged claims unpatentable as obvious over Bradford in light of other prior art references.


On appeal, VidStream renewed its complaint that the Board had violated its own rules by allowing Twitter to file a reply with additional evidence relating to Bradford’s publication date; the patent owner also argued that it was deprived of a fair opportunity to respond to the evidence submitted with Twitter's replies.


These arguments did not persuade the Federal Circuit, which affirmed the PTAB’s ruling that Bradford is prior art against the ‘997 patent. The panel began by explaining that the Board has broad discretion to regulate the presentation of evidence in an IPR, and allowing Twitter to provide the extra evidence at issue here is within the scope of that discretion.


Of course, if the Board allows a challenger to provide additional evidence regarding a reference’s publication date, it must also permit the patent owner to challenge that new evidence. Although VidStream claimed that it had been deprived of an opportunity to respond, the record showed that, after Twitter provided supplemental evidence about the Bradford reference, the Board authorized the patent owner to file a sur-reply—and VidStream did so. Because the PTAB allowed both sides to provide evidence regarding the publication date of the Bradford reference, it acted appropriately.


The Court of Appeals concluded by saying that Twitter’s new evidence (from the Library of Congress, the Copyright Office, and other sources) provided ample support for the Board’s finding that the Bradford reference was both published and publicly available before the ‘997 patent’s May 2012 priority date. And because the only issue on appeal was whether Bradford was prior art, the panel affirmed the PTAB’s rulings that all the challenged claims were unpatentable.



2020
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