981 F.3d 1060
Fed. Cir.2020Background
- VidStream owned U.S. Patent No. 9,083,997 (priority date May 9, 2012) covering methods/systems for recording and publishing social-media content; Twitter petitioned for two IPRs challenging claims 1–35 as obvious, citing Bradford (HTML5 Mastery) as the primary reference.
- Twitter filed excerpts of Bradford and a copyright page showing Copyright © 2011 and ISBNs, but the petition copies also bore a printed legend: “Made in the USA Middletown, DE 13 December 2015,” prompting a dispute over the reference’s publication date.
- In reply, Twitter submitted additional materials: a Library of Congress copy of Bradford (showing ©2011 without the 2015 legend), the Copyright Office registration listing first publication as November 8, 2011, MARC catalog records dated 2011, archived Amazon/website listings from late 2011, and a declaration that the petition excerpts are identical to the LOC copy.
- VidStream moved to exclude the reply evidence and argued Bradford was not prior art because the petitioned pages bore a 2015 reprint date; it also argued prejudice and that Twitter should have submitted all evidence with the petition.
- The PTAB permitted and considered the reply materials, found Bradford publicly accessible before May 9, 2012, and held claims 1–35 unpatentable as obvious in view of Bradford combined with other references; the Federal Circuit affirmed the PTAB’s prior-art and unpatentability conclusions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the PTAB properly considered evidence submitted with Twitter’s replies (procedural/evidentiary issue) | VidStream: Twitter improperly submitted new, untimely evidence in reply and thereby deprived VidStream of a fair opportunity to respond; petition showed 2015 date. | Twitter: Reply evidence was a legitimate rebuttal to VidStream’s challenge to Bradford’s publication date; PTAB rules and precedent allow such rebuttal evidence; VidStream was allowed a sur-reply. | PTAB did not abuse its discretion; admitting/relying on the reply evidence was appropriate and VidStream was not prejudiced. |
| Whether Bradford is a "printed publication" publicly accessible before the ’997 patent priority date (substantive prior-art issue) | VidStream: The actual pages in the petition show a December 13, 2015 imprint; Twitter failed to prove the petitioned pages were available pre-2012. | Twitter: Copyright registration (first publication Nov. 8, 2011), Library of Congress copy, MARC records, and archived Amazon/web listings from 2011—plus page identity—show Bradford was publicly accessible in 2011. | Substantial evidence supports PTAB’s finding that Bradford was publicly accessible before May 9, 2012; Bradford is prior art. |
| Whether claims were unpatentable as obvious based on Bradford combined with other references | VidStream: If Bradford is not prior art, the obviousness case fails. | Twitter: With Bradford as the primary reference, combination references render claims obvious. | VidStream did not contest the obviousness holding once Bradford was deemed prior art; the court affirmed the PTAB’s obviousness decision. |
Key Cases Cited
- Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir. 2018) (public accessibility is the touchstone for printed-publication analysis under §102)
- In re Hall, 781 F.2d 897 (Fed. Cir. 1986) (discussing public accessibility of printed materials)
- In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (case-by-case inquiry into facts/circumstances for public accessibility)
- In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) (same; factual inquiry governs public accessibility)
- Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347 (Fed. Cir. 2018) (burden to prove printed publication when status is reasonably challenged)
- Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372 (Fed. Cir. 2018) (petitioner may introduce new evidence in reply when it legitimately rebuts patent owner’s evidence)
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) (PTAB has broad discretion to regulate presentation of evidence)
- Nobel Biocare Servs. AG v. Instradent USA Inc., 903 F.3d 1365 (Fed. Cir. 2018) (courts may consider the entirety of evidence when assessing printed-publication findings)
- In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015) (standard of review: legal questions de novo, factual findings for substantial evidence)
- Consol. Edison Co. v. Nat’l Labor Relations Bd., 305 U.S. 197 (1938) (definition and standard for substantial evidence)