It’s Not Too Late! Federal Circuit Confirms Evidence to Establish Printed Publication Status of Reference, Submitted Only in Reply, Can Be Considered

This Thanksgiving season, patent practitioners can be thankful for a Federal Circuit opinion clarifying how the Court considers evidence of public accessibility of references asserted in an inter partes review.  See VidStream LLC v. Twitter, Inc., Appeal Nos. 2019-1734, 2019-1735 (Fed. Cir. November 25, 2020).

Twitter filed two petitions for inter partes review of a 2012 HTML-related patent owned by VidStream.  Twitter’s challenge rested on a single primary reference, a book on HTML5 mastery.  In its petition, Twitter submitted evidence of the book’s public accessibility, including its copyright page showing a copyright date of 2011.  But the version of the book Twitter submitted with its petition contained a page that stated: “Made in the USA…13 December 2015.”

Focusing on this date, which was years after the challenged patent’s priority date, VidStream argued in its patent owner’s response that the book was not an available reference.  In response, Twitter submitted a wealth of evidence of public accessibility, including:

• a copy of the book obtained from the Library of Congress bearing a 2011 copyright date (and without the 2015 notation);
• a copy of the book’s Certificate of Registration with the Library of Congress, stating its effective date of registration was in January 2012;
• a declaration of an expert on library cataloging, testifying that the book was available in 2011;
• a declaration of an attorney representing Twitter, testifying that the 2011 version of the book from the Library of Congress was identical to the version Twitter originally submitted with its petition; and
• copies of archived webpages from the Internet Archive, showing the book cited in a publicly accessible webpage in 2011 and for sale on Amazon in 2011.

Based on this evidence, the Board found that the book was an available prior art reference.  After instituting both of Twitter’s challenges, the Board ultimately found every claim of the challenged patent unpatentable as obvious.  VidStream appealed.

On appeal, VidStream first argued that the Board violated its rules in considering evidence that was not provided with Twitter’s petitions, but rather only in its replies.  Twitter argued that the additional evidence was appropriate to counter VidStream’s response to its petition.  The Federal Circuit agreed with Twitter, holding that it was appropriate for the Board to allow Twitter to respond to VidStream’s public accessibility arguments by submitting additional evidence.  Further, because VidStream was given the opportunity to submit a sur-reply, VidStream was not prejudiced.

Second, VidStream argued that even if the new evidence was properly considered, Twitter did not establish that the relevant pages of the book provided with the petitions were published before the priority date.  According to VidStream, whether other versions of the book were available before the priority date is not relevant, since the specific version of the book that Twitter submitted with its petition was not available until 2015.  Twitter argued that the collective evidence, including that submitted with its reply, established that the book, including the pages relied upon in the petition, was publicly accessible before the priority date.

The Federal Circuit agreed with Twitter, finding that the evidence, when considered in its entirety, supported the Board’s finding that the book was published and publicly accessible before the priority date.  Having found the reference publicly accessible, the Court affirmed the Board’s decision of obviousness.