Federal Circuit Further Clarifies Prior Art Date for Non-Patent Publications

In Vidstream v. Twitter, the Federal Circuit affirmed unpatentability of Vidstream’s patent in view of a book even though the copyright page of the version submitted had a later copyright date. Vidstream, LLC. v. Twitter, Inc., Case. 2019-00734, 00723 (Fed. Cir. Nov. 25, 2020). The Court stated whether a document is prior art under 35 U.S.C. § 102(a) is a legal determination, based on the specific facts. So it performed both de novo and substantial evidence review. Id., Slip Op. at 5-6. The Court looked to all the evidence submitted during the proceeding, e.g., the date of first publication, the copyright date of the copy deposited with the Library of Congress, the book’s publication by an “established publisher,” and evidence that the book was available for sale on Amazon, and not just the date shown in the exhibit submitted by Twitter to hold substantial evidence supported the USPTO’s conclusion that the book was publicly accessible before VidStream’s effective date. Id., Slip. Op. at 11.

Finally, the Court also addressed the timeliness of Twitter’s evidence because it was not submitted with the Petition. Vidstream provided many arguments as to untimeliness, the Board acting improperly in considering the alleged late-filed evidence, that Vidstream had no fair opportunity to respond, and that the Board failed to grant a motion to exclude. Id., Slip Op. at 6-8. Without much explanation for why the evidence did not need to be submitted with the Petition, the Court held “[w]e conclude that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.” Id., Slip Op. at 8.

This article appeared in the December 2020 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.