Federal Circuit affirms introduction of evidence in IPR petitioner’s reply briefsDecember 28, 2020

On November 25, 2020, in VidStream LLC v. Twitter, Inc., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed an appeal from the Patent Trial and Appeal Board (“PTAB”) holding evidence introduced by the petitioner in a reply brief of an inter partes review (“IPR”) proceeding, after the petition had been filed, to be admissible.

The case involves two IPR petitions filed by Twitter in which the PTAB held claims 1-35 of U.S. Patent No. 9,083,997 (“the ‘997 patent”), which is owned by VidStream, to be unpatentable due to obviousness. The ‘997 patent was directed to methods, systems, and apparatus for recording and publishing content online.

At issue in the case is whether a book written by Anselm Bradford and Paul Haine (“Bradford”) entitled HTML5 Mastery: Semantics, Standards, and Styling is prior art as to the ‘997 patent. Part of VidStream’s argument that Bradford is not prior art is that evidence introduced by Twitter to show when Bradford was publicly available should have been inadmissible.

In both of its petitions, one of which covered claims 1-19 and the other claims 20-35, Twitter cited Bradford as the primary prior art reference against the ‘997 patent. Twitter filed copies of several pages of Bradford with its appeal in which a page of the copy of Bradford indicated a publication date of December 13, 2015, although Twitter also filed a document citing the copyright date of Bradford as 2011. VidStream argued in its patent owner’s response that since the Bradford reference submitted by Twitter with its petition was published in 2015, it should not be considered prior art of the ‘997 patent which has a priority date of May 9, 2012. Twitter then replied with additional documents to show that Bradford was publicly available prior to the ‘997 patent’s priority date. The PTAB instituted the IPR and found the evidence submitted in Twitter’s reply briefs to show that Bradford is prior art of the ‘997 patent to be admissible.

In its appeal to the Federal Circuit, VidStream argued that the PTAB erred in admitting this evidence because the evidence was submitted by Twitter in its reply briefs rather than with its petition. VidStream cited the PTO’s Trial Guide for IPRs which requires petitioner’s case-in-chief to be made in the petition and that the petitioner may not submit new evidence in a reply brief that it could have presented earlier. Twitter argued in reply by citing precedent from Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380-81 (Fed. Cir. 2018) (internal quotation omitted) which stated:

[T]he petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner, or if it is used to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.

The PTAB allowed the additional evidence establishing the Bradford publication date to be admitted, and the Federal Circuit affirmed that decision. In its opinion, the Federal Circuit noted, in reference to admitting the evidence, that “[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.” Thus, it seems that the Federal Circuit has affirmed the fact that in certain circumstances new evidence may be introduced by a petitioner in an IPR proceeding after the petition has been filed.

Joseph M. Hallman is a Patent Attorney in the Mechanical and Electrical Patent Practice Groups at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Joseph directly via email at joseph.hallman@ipmvs.com