In 2017, Twitter, Inc. (“Twitter”) filed two petitions requesting inter parties review (“IPR”) of U.S. Patent No. 9,083,997 (“the ’997 patent”), with the first petition directed to claims 1-19 and the second petition directed to claims 20-35. The Patent Trial and Appeal Board (“the Board”) issued two substantially similar Final Written Decisions (IPR2017-00829, IPR2017-00830) that found all claims of the ’997 patent unpatentable as obvious. The ’997 patent’s assignee, VidStream LLC (“VidStream”), appealed to the Court of Appeals for the Federal Circuit (“the CAFC”) on the grounds that the primary art reference cited by Twitter and relied on by the Board did not qualify as prior art.

Twitter’s IPRs

In its petitions, Twitter cited a book by Anselm Bradford and Paul Haine (“Bradford”) as its primary reference. Twitter filed copies of several pages of Bradford, and the pages contained three pieces of information relevant to Bradford’s status as prior art:

  • The legend on one page: “Copyright © 2011 by Anselm Bradford and Paul Haine.”;
  • The ISBN information on the same page as the copyright:

ISBN-13 (pbk): 978-1-4302-3861-4
ISBN-13 (electronic) 978-1-4302-3862-1; and

  • Apparent publication information stating:

Made in the USA
Middletown, DE
13 December 2015.

When VidStream contended in its patent owner’s response that Bradford is not an available reference because its publication date of December 13, 2015, postdates the ’997 patent’s priority date of May 9, 2012, Twitter replied with:

  • A copy of Bradford from the Library of Congress marked “Copyright © 2011;
  • A copy of Bradford’s Certificate of Registration at the Copyright Office, which gave a registration date of January 18, 2012, and a date of first publication as November 8, 2011;
  • A declaration from “an expert on library cataloging and classification,” who declared Bradford was available at the Library of Congress in 2011;
  • A declaration from an attorney who stated he compared the pages of Bradford submitted with the petitions and the pages from the Library of Congress and found them to be identical; and
  • Copies of Internet Archive webpages showing Bradford listed on a publicly accessible website with the website date November 2, 2011, and website pages dated December 6, 2011, showing Bradford available for purchase from Amazon.

VidStream subsequently filed a sur-reply in response to Twitter’s reply. However, the Board eventually found Bradford was available as a prior art reference and held claims 1-35 of the ’997 patent to be unpatentable.

VidStream’s Appeal

VidStream argued on appeal to the CAFC that the Board erred by accepting and considering the documents that Twitter provided in its replies. VidStream cited to the Patent and Trademark Office’s (PTO’s) Trial Guide, which requires that Petitioner’s “case-in-chief” for an IPR must be made in the petition, and that Petitioner “may not submit new evidence or argument in reply that it could have presented earlier.”

On November 25, 2020, the CAFC affirmed the Board’s finding against VidStream. The CAFC found that the Board properly considered the evidence presented in Twitter’s replies and that, considering the evidence available to it, The Board properly found Bradford was published and publicly accessible before the ’997 patent’s priority date.

It seems two crucial points arise from this case, which has been designated as precedential:

First, new evidence may be introduced after the petition if the evidence is in “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.” Note that the 2015 publication date of the Bradford reference was apparently introduced by Petitioner Twitter.

Second, even if no one piece of evidence definitively establishes a reference’s public accessibility before the patent’s priority date, the evidence viewed as a whole may still suffice to establish public accessibility.