From The Field

January 25, 2021

In Vidstream, LLC. v. Twitter, Inc., No. 2019-00734 (Fed. Cir. Nov. 25, 2020), the Federal Circuit affirmed a decision by the PTAB holding Vidstream’s patent unpatentable over a reference submitted by Twitter.  In doing so, the Federal Circuit addressed two issues that come up regularly in IPR practice:  when the PTAB can consider evidence submitted by the petitioner on reply, and the date to which a prior art reference is entitled.

Vidstream filed its application for U.S. Patent No. 9,083,997, which is directed to publishing content on social media websites, on May 9, 2012.  Twitter filed two IPR petitions with the PTAB, asserting that the claims in the ’997 patent were obvious.  As its primary reference, Twitter relied on a book authored by Anselm Bradford and Paul Haine (“Bradford”).  The PTAB agreed with Twitter and held the Vidstream claims unpatentable.  

The issue on appeal arose because a page from Bradford that Twitter provided in its IPR petitions had a stamped date of December 13, 2015 – more than three years after the ’997 patent’s filing date.  Vidstream challenged the Bradford reference as not being publicly available before the filing date, and argued that Bradford should not be considered as prior art. 

Twitter then filed a reply brief stating that the 2015 date was merely a reprint date, and presented additional documents purportedly showing that Bradford had been published in 2011.  Twitter submitted a copy of the U.S. Copyright Office Certificate of Registration which stated that Bradford’s date of first publication was November 8, 2011; a copy of the book from the Library of Congress with a “Copyright © 2011” stamp (which did not include the December 13, 2015 legend); an expert declaration stating that the pages from Bradford that Twitter initially submitted were identical to the pages in the Library of Congress copy of the book; and evidence showing that Bradford had been available for sale on Amazon in December 2011.  The PTAB sided with Twitter.  Vidstream appealed. 

On appeal, Vidstream argued that the PTAB improperly considered evidence filed in a reply.  Vidstream contended that, based on the evidence provided in the initial IPR petitions, the reference was published on December 13, 2015, and thus did not qualify as prior art.  Vidstream relied on the USPTO’s Trial Guide for inter partes review which requires that “[P]etitioner’s case-in-chief” must be made in the petition, and that “Petitioner may not submit new evidence or argument in reply that it could have presented earlier.” 

Twitter asserted that its additional evidence was legitimate as a reply to Vidstream’s challenge to Bradford’s publication date.  Twitter relied on PTAB rules and Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018), which states that “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 Federal Circuit agreed with the PTAB and Twitter.  The court concluded that the PTAB “acted appropriately.”  The court held that the PTAB’s process “permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”  The court also underscored that the PTAB had given Vidstream an opportunity to file a sur-reply, and that Vidstream did so. 

The Federal Circuit also reviewed the PTAB’s finding that Bradford had a publication date of November 8, 2011.  In particular, the court pointed to the Copyright Office’s Registration Certificate, and the evidence that Bradford was on sale on Amazon in December 2011 and published by an established publisher.  The Federal Circuit determined that this evidence, viewed as a whole, gave rise to a presumption of public accessibility as of the publication date, and qualified Bradford as prior art against the ’997 patent.  The court thus affirmed. 

Some key takeaways from Vidstream are that (1) a reprint date should not change an earlier publication date; (2) additional evidence of a publication date may be introduced after an initial IPR filing, if the evidence is in reply to a challenge of the publication date; and (3) public accessibility may be established by multiple pieces of evidence viewed as a whole.  Nonetheless, to play it safe, petitioners should probably try to establish the date they need with their opening papers.  

Author: Lana Akopyan