Federal Circuit Concludes That Reference Qualifies As Prior Art Based On Reply Evidence

• Published date: 30 August 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Copyright, Patent, Trials & Appeals & Compensation
• Law Firm: Marshall, Gerstein & Borun LLP
• Author: Mr William (Bill) J. Samore

In VidStream LLC v. Twitter Inc., Appeals 2019-1734, -1735, (Fed. Cir. November 25, 2020), the Federal Circuit affirmed a pair of PTAB inter partes review decisions that determined VidStream's claims, directed to publishing content on social networking websites, are unpatentable as obvious over a five-way combination of references. Important, in this appeal, was the subsidiary conclusion that one of the references - Anselm Bradford & Paul Haine, HTML5 Mastery: Semantics, Standards, and Styling (hereinafter "Bradford") - qualified as prior art. On appeal, VidStream did not challenge the PTAB's determination of obviousness if Bradford qualified as a prior art reference.

The priority date of the VidStream patent is May 9, 2012. Id. at 3. With its IPR petitions, Twitter submitted pages of Bradford that indicated a copyright date of 2011 (i.e., stated, "Copyright ' 2011 by Anselm Bradford and Paul Haine"), but that also identified a publication date of December 13, 2015 (i.e., by stating, "Made in the USA Middletown, DE 13 December 2015"). Id. In its patent owner's response, VidStream thus argued that Bradford did not qualify as prior art because of the publication's "Made in the USA" date. Id. at 4.

With its reply, Twitter included: (i) a copy of Bradford from the Library of Congress marked "Copyright ' 2011," but not including "Made in the USA Middletown, DE 13 December 2015;" (ii) Bradford's Certificate of Registration at the Copyright Office identifying a registration date of January 18, 2012, and a date of first publication of November 8, 2011; (iii) a declaration from an expert on library cataloging declaring that Bradford was available at the Library of Congress in 2011; (iv) a declaration from an attorney stating that the pages between the copy of Bradford submitted with the petitions and the copy of Bradford available at the Library of congress were identical; (v) copies of archived webpages showing Bradford listed on a public website on November 28, 2011, and available for purchase on Amazon in both paperback and electronic form on December 6, 2011.

VidStream then filed a sur-reply arguing that the evidence in Twitter's reply was not timely because it was not submitted with Twitter's original petition. However, the Federal Circuit rejected this argument, stating that the submission of evidence was allowed by PTAB rules, as well as by Federal Circuit precedent, which...