It’s a Date – Twitter Reply Proves Prior Art Publication Date


Before Newman, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board.

Summary: Evidence of a prior art reference’s publication date submitted after an IPR petition may be appropriately considered by the Board if the evidence is a legitimate reply to a challenge by the patent owner.

Twitter requested two Inter Partes Reviews of a patent assigned to VidStream LLC. having a priority date of May 9, 2012. Twitter asserted that the system was not patentable as obvious, identifying a book authored by Anselm Bradford and Paul Haine (“Bradford”) as prior art against VidStream’s patent.

Twitter’s petitions included a copy of Bradford’s copyright page that contained the following legend: “Copyright © 2011”. In response, VidStream argued that Bradford was not prior art because a page in Bradford indicated it was published on December 13, 2015. In its reply, Twitter cited additional documents evidencing the 2011 publication date, including: (i) a copy of Bradford that was obtained from the Library of Congress marked, “Copyright © 2011”, (ii) a copy of Bradford’s Certificate of Registration with the Copyright Office that stated Bradford’s date of first publication was November 8, 2011, and (iii) evidence from the Internet Archive showing Bradford was available to order on Amazon in 2011. Relying on the collective evidence submitted in Twitter’s petitions and replies, the Board held Bradford is prior art and invalidated claims in VidStream’s patent. VidStream appealed, arguing that the Board erred by relying on evidence first presented in the replies.

The Federal Circuit affirmed the Board’s decision. The Federal Circuit explained that both parties were permitted an opportunity to provide evidence concerning the reference date of the Bradford book, that VidStream was provided with an opportunity to respond to Twitter’s evidence submitted in its replies, and that the collective evidence submitted well supports the Board’s finding that Bradford was published and publicly available before VidStream’s 2012 patent priority date.

Editor: Paul Stewart