Last week the U.S. Court of Appeals for the Federal Circuit issued an opinion in VidStream LLC v. Twitter, Inc., Nos. 2019-1734, -1735 (Nov. 25, 2020). The Court affirmed the Patent Trial and Appeal Board’s ruling that a particular reference, the Bradford reference, was prior art based, in part, on evidence submitted in the Petitioner’s reply.
Twitter filed two petitions for Inter Partes Review (IPR) against VidStream, citing the Bradford reference as its primary reference in both. In the petitions, Twitter submitted the Bradford reference with a copyright date of 2011 and ISBN information. The reference, however, also stated that it was “Made in the USA Middletown, DE 13 December 2015.” VidStream, in its responses, challenged the availability of the Bradford reference based on the publication date of December 13, 2015. Twitter, in its replies, provided additional documents to support the availability of the Bradford reference including:
· a copy of Bradford that was obtained from the Library of Congress marked “Copyright © 2011” that did not contain the statement “Made in the USA Middletown, DE 13 December 2015”;
Bradford’s Copyright Certificate of Registration listing a date of first publication of November 8, 2011;
Internet Archive webpages showing Bradford was available in November and December of 2011; and
Testimony from an expert on library cataloging and classification who testified that Bradford was available at the Library of Congress in 2011.
VidStream appealed, arguing that the Board erred in considering additional evidence regarding Bradford’s availability because it was not provided with the IPR petitions and was, instead, first provided with Twitter’s replies.
The Federal Circuit affirmed. On the standard of review, the Court reiterated that the determination of whether a document is prior art is a legal determination, based on underlying facts, such that the Court reviews the Board’s legal determinations de novo and its factual findings for substantial evidence. Applying this standard, the Court concluded that VidStream suffered no prejudice from the timing of the evidence submitted with Twitter’s replies because the Board allowed VidStream to file a surreply. The Court also rejected VidStream’s assertion that the Board failed to link the 2015 Bradford reference submitted with the petition to the later submitted evidence concerning a 2011 publication date. Looking at the totality of the evidence, the Court held that “[t]he evidence well supports the Board’s finding that Bradford was published and publicly accessible before the [relevant] patent’s 2012 priority date.”