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 stated:

[T]he 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.

Id. at 7-8 (quoting Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (internal quotation omitted)).

The Federal Circuit stated that “[w]hen the status of a reference is reasonably challenged, the provider of the reference has the burden of establishing that the requirements of ‘printed publication’ are met.”  Id. at 9, citing Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018).  VidStream also argued that even if Twitter’s reply evidence was considered, it did not establish that the pages of Bradford provided in Twitter’s original petitions were published before the priority date.  Id. at 10. However, the Federal Circuit ultimately disagreed with VidStream and agreed, instead, with the PTAB’s reasoning that Twitter’s reply evidence, viewed as a whole, established Bradford’s public accessibility before the VidStream patent’s priority date.  Id.

Notably, this case serves as a reminder of particular situations where new evidence may be introduced after the petition stage (e.g., in reply to evidence introduced in the patent owner’s response, or “used to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness”).  Anacor Pharm., 880 F.3d at 1380–81.  Further, this case serves as an example of how public accessibility may be established by the evidence taken as a whole, rather than only by a single piece of evidence.