Vidstream LLC v. Twitter, Inc.

Case: 19-1734    Document: 51    Page: 1   Filed: 11/25/2020




   United States Court of Appeals
       for the Federal Circuit
                  ______________________

                   VIDSTREAM LLC,
                       Appellant

                            v.

                     TWITTER, INC.,
                         Appellee
                  ______________________

                   2019-1734, 2019-1735
                  ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2017-
 00829, IPR2017-00830.
                  ______________________

                Decided: November 25, 2020
                  ______________________

    EAGLE HOWARD ROBINSON, Norton Rose Fulbright US
 LLP, Austin, TX, for appellant. Also represented by
 STEPHANIE DEBROW.

     DAVID L. MCCOMBS, Haynes & Boone, LLP, Dallas, TX,
 for appellee.    Also represented by DEBRA JANECE
 MCCOMAS; RAGHAV BAJAJ, Austin, TX; THOMAS B. KING,
 Costa Mesa, CA.
                 ______________________

 Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.
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 2                             VIDSTREAM LLC   v. TWITTER, INC.




 NEWMAN, Circuit Judge.
     On two inter partes review (“IPR”) petitions filed by
 Twitter, Inc., the Patent Trial and Appeal Board (“PTAB”
 or “Board”) held that claims 1–35 of 

U.S. Patent No. 9,083,997

 (“the ’997 patent”), assigned to VidStream LLC,
 are unpatentable on the ground of obviousness. 1 Vid-
 Stream appeals, arguing that the Board erred in finding
 that a book authored by Anselm Bradford and Paul Haine 2
 (“Bradford”) is prior art against the ’997 patent.
     We affirm the Board’s holding that Bradford is prior
 art. With Bradford as the primary reference, VidStream
 does not appeal the Board’s decision of unpatentability of
 claims 1–35. That decision is affirmed.
                        BACKGROUND
     The ’997 patent is titled: “Recording and Publishing
 Content on Social Media Websites.” The Abstract states
 the invention as: “Methods, systems, and apparatus, in-
 cluding computer programs encoded on a computer storage
 medium, for recording and publishing content on social net-
 working websites and other websites . . . .” ’997 patent, Ab-
 stract. The ’997 patent’s priority date is May 9, 2012.
    Twitter filed two petitions for IPR, with method claims
 1–19 in one petition, and medium and system claims 20–


     1   Twitter, Inc. v. VidStream, LLC, No. IPR2017-
 00829, 

2019 WL 360174

 (P.T.A.B. Jan. 28, 2019) and No.
 IPR2017-00830, 

2019 WL 360175

 (P.T.A.B. Jan. 28, 2019).
 The Board issued substantially identical opinions. Cita-
 tions to “Board Op.” are to IPR2017-00829 unless other-
 wise noted.
     2 Anselm Bradford & Paul Haine, HTML5 Mastery:
 Semantics, Standards, and Styling (2011).
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 VIDSTREAM LLC   v. TWITTER, INC.                           3



 35 in the other petition. Twitter cited Bradford as the pri-
 mary reference for both petitions, combined with other ref-
 erences. With the petitions, Twitter filed copies of several
 pages of the Bradford book, and explained their relevance
 to the ’997 claims.
     Twitter also filed a Bradford copyright page which con-
 tains the legend:
    Copyright © 2011 by Anselm Bradford and Paul
    Haine
 This page also states the ISBN 3 information:
    ISBN-13 (pbk): 978-1-4302-3861-4
    ISBN-13 (electronic): 978-1-4302-3862-1
 The issue on appeal arises because a page of the copy of
 Bradford cited in Twitter’s petitions states:
        Made in the USA
        Middletown, DE
        13 December 2015


    3    The ISBN is the unique International Standard
 Book Number which identifies a book. See International
 ISBN Agency, ISBN Users’ Manual §§ 2, 3.9, 6.1 (7th ed.
 2017) (The International Standard Book Number (“ISBN”)
 “is a unique international identifier for monographic pub-
 lications . . . . A separate ISBN shall be assigned to each
 separate monographic publication or separate edition or
 format of a monographic publication issued by a pub-
 lisher. A separate ISBN shall be assigned to each different
 language edition of a monographic publication. . . . A sep-
 arate ISBN should not be assigned to an unchanged edition
 or unchanged reprint of the same publication, issued in the
 same product form, product form detail, product form fea-
 ture, with the same usage constraints, by the same pub-
 lisher or imprint.”).
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 4                             VIDSTREAM LLC   v. TWITTER, INC.



 VidStream, in its patent owner’s response, stated that
 Bradford is not an available reference because it was pub-
 lished December 13, 2015. Twitter filed replies with addi-
 tional documents, including a copy of Bradford that was
 obtained from the Library of Congress, 4 marked “Copyright
 © 2011;” this copy did not contain the “Made in the USA
 Middletown, DE 13 December 2015” legend. Twitter also
 obtained from the Copyright Office a copy of Bradford’s
 Certificate of Registration, that states:
     Effective date of registration: January 18, 2012
                             ***
     Date of 1st Publication: November 8, 2011
 The Certificate of Registration further states: “This Certif-
 icate issued under the seal of the Copyright Office in ac-
 cordance with title 17, United States Code, attests that
 registration has been made for the work identified below.
 The information on this certificate has been made a part of
 the Copyright Office records.”
     Twitter also filed the Declaration of “an expert on li-
 brary cataloging and classification,” Dr. Ingrid Hsieh-Yee,
 who declared that Bradford was available at the Library of
 Congress in 2011. Hsieh-Yee Decl. at ¶¶ 5, 15. Dr. Hsieh-
 Yee cited a Machine-Readable Cataloging (“MARC”) record
 that was created on August 25, 2011 by the book vendor,
 Baker & Taylor Incorporated Technical Services & Product
 Development, adopted by George Mason University, and


     4    The Library of Congress’ copy is accompanied by
 the following statement: “THIS IS TO CERTIFY that the
 collections of the Library of Congress contain a book enti-
 tled HTML5 MASTERY: SEMANTICS, STANDARDS,
 AND STYLING, Anselm Bradford and Paul Haine . . ., and
 that the following pages are a true and complete represen-
 tation from that work.”
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 VIDSTREAM LLC   v. TWITTER, INC.                           5



 modified by the Library of Congress on December 4, 2011.
 Id. at ¶¶ 13–15 (“It is my opinion that Bradford would have
 been searchable on WorldCat as early as August 8, 2011,
 but in any event no later than December 4, 2011, and there-
 fore accessible to the public as of that time.”). Dr. Hsieh-
 Yee explained that “[l]ibrary online catalogs are based on
 MARC records that represent their collections and help the
 public understand what materials are publicly accessible
 in those libraries.” Id. at ¶ 11.
     In addition, Twitter filed the Declaration of attorney
 Raghan Bajaj, who stated that he compared the pages from
 the copy of Bradford submitted with the petitions, and the
 pages from the Library of Congress copy of Bradford, and
 that they are identical. Bajaj Decl. at ¶ 5. Twitter stated
 that the 2015 date is a “reprint date.” Twitter Br. at 12
 (“[What VidStream relies on] is a reprint date on a copy of
 the work indicating that particular copy was printed on De-
 cember 13, 2015.”).
     Twitter also filed copies of archived webpages from the
 Internet Archive, showing the Bradford book listed on a
 publicly   accessible     website    (http://www.html5mas-
 tery.com/) bearing the website date November 28, 2011,
 and website pages dated December 6, 2011 showing the
 Bradford book available for purchase from Amazon in both
 an electronic Kindle Edition and in paperback.
    VidStream filed a sur-reply challenging the timeliness
 and the probative value of the supplemental information
 submitted by Twitter.
     The Board instituted the IPR petitions, found that
 Bradford was an available reference, and held claims 1–35
 unpatentable in light of Bradford in combination with
 other cited references. VidStream appeals.
                     STANDARD OF REVIEW
     Whether a document is prior art under 

35 U.S.C. § 102

(a) is a legal determination, based on the specific
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 6                              VIDSTREAM LLC   v. TWITTER, INC.



 facts. Medtronic, Inc. v. Barry, 

891 F.3d 1368, 1380

 (Fed.
 Cir. 2018). We review the Board’s legal determinations de
 novo, and its factual findings for support by substantial ev-
 idence. In re Cuozzo Speed Techs., LLC, 

793 F.3d 1268, 1280

 (Fed. Cir. 2015). Substantial evidence is “such rele-
 vant evidence as a reasonable mind might accept as ade-
 quate to support a conclusion.” Consol. Edison Co. v. Nat’l
 Labor Relations Bd., 

305 U.S. 197, 229

 (1938). Substantial
 evidence may be “something less than the weight of the ev-
 idence but more than a mere scintilla of evidence.” In re
 Mouttet, 

686 F.3d 1322, 1331

 (Fed. Cir. 2012).
      The PTAB’s evidentiary rulings are reviewed on the
 standard of abuse of discretion. Belden Inc. v. Berk-Tek
 LLC, 

805 F.3d 1064, 1078

 (Fed. Cir. 2015). Abuse of dis-
 cretion arises if the ruling: “(1) is clearly unreasonable, ar-
 bitrary, or fanciful; (2) is based on an erroneous conclusion
 of law; (3) rests on clearly erroneous fact findings; or (4)
 follows from a record that contains no evidence on which
 the Board could rationally base its decision.” Shu-Hui
 Chen v. Bouchard, 

347 F.3d 1299, 1307

 (Fed. Cir. 2003).
                          DISCUSSION
      VidStream argues that the Board erred in accepting
 and considering the documents that Twitter provided with
 its replies. VidStream states that the Bradford pages that
 were filed with Twitter’s petitions were published Decem-
 ber 13, 2015, and that Twitter did not show that these
 pages were available before the ’997 patent’s filing date.
 VidStream argues that Bradford was not shown to be a ref-
 erence against the ’997 patent.
       A. Evidence – PTAB Rules and Procedure
     VidStream argues that the Board violated its own rules
 in considering evidence that was not provided with the IPR
 petitions, but only with the replies.
     VidStream states that the petitions showed a Decem-
 ber 13, 2015 publication date for Bradford, a date long after
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 VIDSTREAM LLC   v. TWITTER, INC.                             7



 the May 9, 2012 filing date of the ’997 patent. VidStream
 stresses that the Board erred by relying on evidence that
 was first submitted with Twitter’s reply briefs, and also
 that this evidence does not show that the Bradford book on
 which the IPR petitions were based was accessible before
 VidStream’s 2012 filing date. VidStream states that on
 proper evidentiary process, there was insufficient evidence
 that Bradford was a printed publication before the Vid-
 Stream filing date, because the pages of Bradford filed with
 the petitions were “made” on “13 December 2015.”
      VidStream argues that Twitter was required to include
 with its petitions all the evidence on which it relies, for the
 PTO’s Trial Guide for inter partes review requires that
 “[P]etitioner’s case-in-chief” must be made in the petition,
 and “Petitioner may not submit new evidence or argument
 in reply that it could have presented earlier.” Trial Prac-
 tice Guide Update, United States Patent and Trademark
 Office 14–15 (Aug. 2018), https://www.uspto.gov/sites/de-
 fault/files/documents/2018_Revised_Trial_Practice_Guide.
 pdf.
     Twitter filed, with its replies: a copy of the U.S. Copy-
 right Office Certificate of Registration which states the
 date of first publication as November 8, 2011; a Library of
 Congress copy of Bradford; and, the Declaration of Raghav
 Bajaj that he had compared the excerpts of Bradford sub-
 mitted with the petitions with the same pages in the Li-
 brary of Congress copy of Bradford, and found them
 “identical.” VidStream moved to exclude these documents.
     Twitter responded that the information filed with its
 replies was appropriate in view of VidStream’s challenge to
 Bradford’s publication date, and that this practice is per-
 mitted by the PTAB rules and by precedent, which states:
     [T]he petitioner in an inter partes review proceed-
     ing may introduce new evidence after the petition
     stage if the evidence is a legitimate reply to evi-
     dence introduced by the patent owner, or if it is
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 8                             VIDSTREAM LLC   v. TWITTER, INC.



     used to document the knowledge that skilled arti-
     sans would bring to bear in reading the prior art
     identified as producing obviousness.
 Anacor Pharm., Inc. v. Iancu, 

889 F.3d 1372

, 1380–81 (Fed.
 Cir. 2018) (internal quotation omitted). “[The Board] has
 broad discretion to regulate the presentation of evi-
 dence . . . .” Belden, 

805 F.3d at 1081

.
     VidStream also argues that it was deprived of a fair
 opportunity to respond to the evidence submitted with
 Twitter’s replies. Twitter points out that VidStream was
 not prejudiced, for the Board authorized VidStream to file
 a sur-reply, and it did so.
     The Board denied VidStream’s Motion to Exclude,
 holding that it was appropriate to permit Twitter to re-
 spond to VidStream’s challenge by providing additional ev-
 idence to establish the Bradford publication date. We
 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 cor-
 rect answer.
           B. The Bradford Publication Date
     “‘[P]ublic accessibility’ has been called the touchstone
 in determining whether a reference constitutes a ‘printed
 publication . . . .’” In re Hall, 

781 F.2d 897, 899

 (Fed. Cir.
 1986). “A reference will be considered publicly accessible if
 it was disseminated or otherwise made available to the ex-
 tent that persons interested and ordinarily skilled in the
 subject matter or art exercising reasonable diligence[] can
 locate it.” Medtronic, 

891 F.3d at 1380

 (alteration in origi-
 nal) (internal quotation marks omitted). “Whether a refer-
 ence is publicly accessible is determined on a case-by-case
 basis based on the ‘facts and circumstances surrounding
 the reference’s disclosure to members of the public.’” In re
 Lister, 

583 F.3d 1307, 1311

 (Fed. Cir. 2009) (quoting In re
 Klopfenstein, 

380 F.3d 1345, 1350

 (Fed. Cir. 2004).
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 VIDSTREAM LLC   v. TWITTER, INC.                             9



     When the status of a reference is reasonably chal-
 lenged, the provider of the reference has the burden of es-
 tablishing that the requirements of “printed publication”
 are met. See Jazz Pharm., Inc. v. Amneal Pharm., LLC,
 

895 F.3d 1347, 1356

 (Fed. Cir. 2018) (“[W]hether a refer-
 ence is a ‘printed publication’ is a ‘case-by-case inquiry into
 the facts and circumstances surrounding the reference’s
 disclosure to members of the public.’” (quoting Klopfen-
 stein, 

380 F.3d at 1350

)).
      The Board found that the November 8, 2011 date of
 first publication, stated in the Copyright Office’s Regis-
 tration Certificate, supports the 2011 copyright date of
 the copy of Bradford obtained from the Library of Con-
 gress and “is consistent with Bradford being for sale on
 Amazon in December 2011,” and “indicates it was pub-
 lished by an established publisher.” Board Op. at *5. See
 Kyocera Wireless Corp. v. Int’l Trade Comm’n, 

545 F.3d 1340, 1351

 (Fed. Cir. 2008) (finding public accessibility
 when the reference was contained in a book sold to the pub-
 lic). When there is an established publisher there is a pre-
 sumption of public accessibility as of the publication date.
 See Giora George Angres, Ltd. v. Tinny Beauty & Figure,
 Inc., 

116 F.3d 1497

, No. 96-1507, 

1997 WL 355479

 at *7
 (Fed. Cir. 1997) (“[A]s Memoirs was published (in England)
 by an established publisher, there is no reason to suspect
 that it was not publicly available, including to one skilled
 in the art, and no evidence was presented that it was not.”
 (citing Hall, 

781 F.2d at 899

)).
     The Board found that the Amazon webpage from the
 Internet Archive, www.amazon.com/HTML5-Mastery-
 Semantics-Standards-Styling/dp/1430238615, “supports
 that Bradford was publicly accessible in 2011, and, in par-
 ticular, that interested persons could order the book from
 Amazon either in hard copy or electronically.” Board Op.
 at *6. The Board discussed all the materials that were sub-
 mitted, and found:
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 10                             VIDSTREAM LLC   v. TWITTER, INC.



      Although no one piece of evidence definitively es-
      tablishes Bradford’s public accessibility prior to
      May 9, 2012, we find that the evidence, viewed as
      a whole, sufficiently does so. In particular, we find
      the following evidence supports this finding: (1)
      Bradford’s front matter, including its copyright
      date and indicia that it was published by an estab-
      lished publisher (Exs. 1010, 1042, 2004); (2) the
      copyright registration for Bradford (Exs. 1015,
      1041); (3) the archived Amazon webpage showing
      Bradford could be purchased on that website in De-
      cember 2011 (Ex. 1016); and (4) Dr. Hsieh-Yee’s
      testimony showing creation and modification of
      MARC records for Bradford in 2011.
 Id. at *9.
      VidStream argues that the Board erred, and that even
 if Twitter’s evidence submitted in reply were considered,
 Twitter did not establish that the pages of Bradford that
 were provided with the petitions were published before
 VidStream’s May 9, 2012 priority date. VidStream states
 that “the Board not only considered, but indeed based its
 public accessibility findings on evidence relating to a ver-
 sion (or versions) of Bradford other than the version . . . in
 Twitter’s IPR petition,” VidStream Br. 9 (emphasis re-
 moved). VidStream states that the Board “departed from
 the specific grounds of unpatentability set forth in the pe-
 titions and thus exceeded its statutory authority.” Id.
     VidStream stresses that the Board did not link the
 2015 copy of Bradford with the evidence purporting to show
 publication in 2011, i.e., the date of copyright registration,
 the archival dates for the Amazon and other webpages, and
 the date the MARC records were created. VidStream ar-
 gues that the Board did not “scrutiniz[e] whether those doc-
 uments actually demonstrated that any version of
 Bradford was publicly accessible at that time.” VidStream
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 VIDSTREAM LLC   v. TWITTER, INC.                          11



 Br. 22. VidStream states that Twitter did not meet its bur-
 den of showing that Bradford was accessible prior art.
     Twitter responds that the Board correctly found that
 the collective evidence, including: the Copyright Office evi-
 dence of Bradford’s 2011 copyright registration, the 2011
 copyright date in every copy of Bradford, the presence of an
 established publisher, the listing for sale on Amazon web
 pages in 2011, and the book’s existence in the MARC rec-
 ords dated August 25, 2011, all uniformly support publica-
 tion and public accessibility before the ’997 patent’s
 priority date of May 9, 2012. Twitter states that the evi-
 dence established the identity of the pages of Bradford filed
 with the petitions and the pages from the copy of Bradford
 in the Library of Congress. Twitter explains that the copy
 “made” on December 13, 2015 was a reprint, for the 2015
 copy has the same ISBN as the Library of Congress copy,
 as is consistent with a reprint, not a new edition. See n.3,
 supra.
     The evidence well supports the Board’s finding that
 Bradford was published and publicly accessible before the
 ’997 patent’s 2012 priority date. See Nobel Biocare Servs.
 AG v. Instraden USA Inc., 

903 F.3d 1365, 1376

 (Fed. Cir.
 2018) (considering the entirety of the evidence relevant to
 the Board’s finding of printed publication).
    We affirm the Board’s ruling that Bradford is prior art
 against the ’997 patent.
     C. Obviousness Based on Bradford
     The Board cited Bradford as the primary reference,
 combined with references of Nassiri (U.S. Patent Applica-
 tion Publication No. 2012/0254925 A1, filed April 1, 2011;
 Tosh’o (Brian Stelter, Their Pain Is His Gain, N.Y. Times,
 Aug. 22, 2010, at AR 15, 19); Lerman (U.S. Patent Applica-
 tion Publication No. 2006/0259588 A1, pub1ished Nov. 16,
 2006); and Zhu (U.S. Patent Application Publication
 2010/0180330 A1, published July 15, 2010). VidStream
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 12                             VIDSTREAM LLC   v. TWITTER, INC.



 does not challenge the Board’s decision of obviousness if
 Bradford is available as a reference.
                         CONCLUSION
      In view of our affirmance that Bradford is prior art, we
 affirm the Board’s rulings of unpatentability of claims 1–
 35 of the ’997 patent, in the two IPR decisions on appeal.
                         AFFIRMED
      Each party shall bear its costs.