Latest Federal Court Cases - November 2020 #5

Schwabe, Williamson & Wyatt PC

Schwabe, Williamson & Wyatt PC

VidStream LLC v. Twitter, Inc., Appeal No. 2019-1734, -1735 (Fed. Cir. Nov. 25, 2020)

In the Federal Circuit’s only precedential case last week, the Court addressed the extent to which a book published before the priority date but printed after the priority date qualifies as a printed publication. The Court affirmed a decision by the PTAB finding it to be prior art.

Twitter filed a petition for an IPR concerning a patent for recording and publishing content on social media websites. The patent had a priority date of May 9, 2012. In its petition for IPR, Twitter relied on a book published by Anselm Bradford that had a copyright date of 2011 and certain ISBN information. However, one page in the book stated, “Made in the USA … 13 December 2015.” VidStream argued that it did not constitute prior art because the relied-upon version of the book was not published until after the priority date.

In its reply, Twitter filed additional documents, including a copy of Bradford obtained from the Library of Congress with a 2011 copyright date, which did not contain the 2015 date in it, a copy of the Certificate of Registration from the copyright office, a declaration from an expert in library cataloging and classification, a declaration from an attorney who testified that he compared each page of the respective books and found them to be substantively identical, and pages from the Internet Archive showing that the book was available on Amazon in December 2011.

VidStream filed a sur-reply challenging the timeliness and probative value of the evidence provided by Twitter on reply.

The PTAB instituted review, found that Bradford was an available reference, and held all claims invalid over Bradford in addition to other prior art. VidStream appealed solely issues concerning Bradford as prior art.

The Federal Circuit first found the PTAB properly admitted the evidence submitted for the first time on reply, concluding “that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”

After summarizing the evidence presented and the arguments of each party, the Court also held, succinctly, that “[t]he evidence well supports the Board’s finding that Bradford was published and publicly accessible before the ’997 patent’s 2012 priority date.”

Holding that Bradford was prior art, the Court affirmed the conclusion of obviousness in a short opinion. 

The opinion can be found here.

By: Nika Aldrich

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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