Saturday, June 09, 2018

YouTube videos and comments to blogs as prior art used by the USPTO?

There is a 8 June 2018 post on the Duets Blog titled Can a YouTube Video Invalidate a Patent? It’s Certainly Possible which contains the text

Prior art can spell the unexpected demise of an otherwise valid patent, and it comes in many forms. For several decades, published prior art (not to be confused with prior art in the form of prior uses or sales) consisted of already-existing patents (and applications), trade journals, drawings, articles, websites, standards, whitepapers, etc. But Congress expanded the scope of published prior art dramatically in passing the America Invents Act in 2012. Whereas before prior art consisted merely of “printed publications,” post-AIA, prior art also encompasses things that are “otherwise available to the public.”

The larger–and more modern–universe of possible published prior art is easy to imagine. For example, prior art references are no longer limited to traditional publications and documentary evidence. Instead, additional forms of multimedia come into play–which is fitting in today’s multimedia-packed times. Videos, movies, broadcasts, and recordings all now qualify as prior art, so long as they are available to the public
Just one week ago, a Federal district judge in the Northern District of Florida addressed–apparently for the first time–whether a YouTube video could constitute prior art. The court, in HVLPO2, LLC v. Oxygen Frog, LLC, 4:16-CV-336 (MW/CAS) (Dkt. No. 133), held that a YouTube video can constitute prior art and that YouTube videos are “sufficiently accessible to the public interested in the art.” Not exactly a groundbreaking finding to someone of my generation, who grew up with YouTube and the internet. Indeed, the USPTO’s own training guides (slide 15) specifically state that YouTube videos are a perfectly acceptable form of prior art. The USPTO has stated that videos qualified prior to the AIA, but there is conflicting authority.

The court pushed back in eccentric fashion, stating:

It appears that Plaintiff is unfamiliar with how YouTube works. A familiar user would know that you don’t need to search for a particular channel to watch the videos uploaded on it. For example, if you want to watch a video of a cat skateboarding, you can search “cat skateboarding”; you don’t need to know that it might have been “CatLady83” who uploaded the video you end up watching.

The court held that the YouTube video in question appeared within the first 20 videos when using appropriate search terms on the site. “Surely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the ‘reasonable diligence’ that the law expects of a hypothetical prior art subject.” I couldn’t agree more

As to the USPTO position on YouTube videos as prior art, Patricia E. Campbell wrote in 18 N.C. J.L. & Tech. 187 (2016):

Similarly, in the training materials it distributes to its examiners, the
USPTO states that "otherwise available to the public" is a new catch-all
provision that has no counterpart in pre-AIA law. n122 The types of things that
may qualify as prior art under the AIA include "an oral presentation at a
scientific meeting," "a demonstration at a trade show," "a lecture or speech,"
"a statement made on a radio talk show," and "a YouTube video, Web site, or
other on-line material." n123 Thus, the USPTO apparently believes that, while
these types of disclosures may have been close calls at best under pre-AIA law,
they now constitute prior art if the subject matter is available to the public
in some way.

Note BRADLEY v. Applied Marine, 2014 U.S. Dist. LEXIS 56701 (April 23, 2014) with text

[Applied Marine] contends that Bradley or his attorneys knowingly
and intentionally failed to disclose to the PTO material prior art while applying for the '520 Patent. (Id. ¶ 26.) This
material prior art is a video posted to YouTube (the "Video") showing a sonar mount that includes a mechanism
for preventing and allowing the cross beam to rotate. (Id. ¶ 24.)


For purposes of Bradley's motion, the Court assumes that the YouTube Video constitutes a public use of the claimed invention, that is,
claims 1 through 5 of the '520 Patent. Thus, if the "effective filing date" of the claimed invention is more than a year
after September 9, 2009--the date the Video was posted--the Video is potentially invalidating prior art that should have
been disclosed to the PTO.

As background for the court in Bradley:

In general, a person is not entitled to a patent for a new invention if
the claimed invention was in public use before the effective filing date
of the claimed invention. 35 U.S.C. § 102(a)(1). Section 102(b) provides an
exception for public use by the inventor not more than one year prior to the
applicable filing date. 35 U.S.C. § 102(b)(1).

Of the use of YouTube (and blog comments) as prior art, see DODOCASE VR, INC. v. MERCHSOURCE, LLC, 2018 U.S. Dist. LEXIS 48654 (March 23, 2018):

Defendants then filed three separate PTAB Petitions, challenging each of the three Dodocase Patents, on January 15,
2018. Dkt. No. 23, Am. Compl., ¶ 52. The PTAB Petitions rely on the same three "primary references": (1) U.S. Patent
Publication No. 2013/0141360, which issued as [*8] U.S. Patent 9,423,827 ("Compton"); (2) a comment posted on a
blog entitled, "Why Google Cardboard is Actually a Huge Boost for Virtual Reality" ("Gigaom"); and (3) a YouTube
video entitled, "Use Google Cardboard without Magentometer (Enabling Magnetic Ring Support to Every Device)"
("Tech#"). Id., ¶ 52.
Plaintiff alleges that none of these alleged prior art references invalidate the Dodocase Patents. Id.,
¶¶ 54-62.

On February 2, 2018, Defendants answered the complaint and filed a counterclaim against Plaintiff. Dkt. No. 22. The
counterclaim sought declaratory judgment that each of the three Dodocase Patents is invalid for at least the reasons set
forth in the PTAB Petitions. Id., Counterclaim, ¶¶ 6-26

Of the HVLPO2, LLC controversy, see

2017 U.S. Dist. LEXIS 213978

187 F. Supp. 3d 1097; 2016 U.S. Dist. LEXIS 66758

***An issue to contemplate is the enablement of "prior art" such as YouTube videos. The Antor court holding applied to non-patent printed publications cited by the examiner [689 F.3d 1282; 2012 U.S. App. LEXIS 15637; 103 U.S.P.Q.2D 1555]:

We first address Antor's argument that the Board erred by holding that prior art publications cited by an examiner are
presumptively enabling during prosecution. A prior art reference cannot anticipate a claimed invention "if the allegedly
anticipatory disclosures cited as prior art are not enabled." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1354 (Fed. Cir. 2003). As we stated in Amgen, both claimed and unclaimed materials disclosed in a patent are
presumptively enabling:

In patent prosecution the examiner is entitled to reject application claims as anticipated by a prior art patent without conducting an
inquiry into whether or not that patent is enabled or whether or not it is the claimed material (as opposed to the unclaimed
disclosures) in that [**9] patent that are at issue. In re [page 1288] Sasse, 629 F.2d 675, 681, 207 USPQ 107, 111 (C.C.P.A. 1980)
("[W]hen the PTO cited a disclosure which expressly anticipated the present invention . . . the burden was shifted to the applicant.
He had to rebut the presumption of the operability of [the prior art patent] by a preponderance of the evidence." (citation omitted)).
The applicant, however, can then overcome that rejection by proving that the relevant disclosures of the prior art patent are not
enabled. Id.

Id. at 1355 (footnote omitted). We then indicated that that presumption applies in the district court as well as the PTO,
placing the burden on the patentee to show that unclaimed disclosures in a prior art patent are not enabling. Id. That
case, however, did not decide whether a prior art printed publication, as distinguished from a patent, is presumptively
enabling during patent prosecution. Id. at 1355 n.22 ("We note that by logical extension, our reasoning here might also
apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today."). As
the issue regarding non-patent publications is squarely before the court today, we now hold that a prior
art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent
applicant or patentee.

As to unusual evidence, recall the story of Ányos István Jedlik , who did not disclose his work on the dynamo until 1861 when he mentioned it in writing in a list of inventory of the university.

Separately, one wonders if posts on Facebook, as prior art, will "cut into" the "first inventor to file" rule.
Recall, way back in the aluminum patent interference, that personal letters were used as evidence:

The same day and the day after, he [ Hall]wrote two letters to his brother George, explaining the theoretical and experimental conditions of his invention, and already putting some questions about filing a patent and then getting up a company.  In July 1886, he and George made the trip to Washington and filed an application at the Patent Office. But he was astounded to learn that the French Paul Héroult had already applied for a US patent for the electrolysis of aluminium in April 1886. This was the beginning of a three years long litigation between the two young inventors. Thanks to the letters to his brother and the testimonies of Julia and Professor Jewett, Hall was finally able to establish that his invention predated Paul Héroult’s application. On April 2, 1889, he was granted the patent he had filed in July 1886, as well as three other patents he had applied for in the meantime

Separately, as IPBiz noted as to the "Sikahema effect," posts on the internet can come and go. Will screenshots become prior art, even when the original has vanished?

"But nothing can ever truly be deleted on the Internet"

Separately, things on the internet can be quite malleable, with changes made after the "posting date."

In a case involving contact to a website, New Jersey, and copyright, note from a post about -- The Adventures of Buckaroo Banzai Across the 8th Dimension --

MGM contends that the services of Rauch and Richter were provided on a "work-made-for-hire" basis," or alternatively, that it was assigned "all exclusive rights under copyright to the screenplay and motion picture, and the characters, plots, themes, dialogue, mood, settings, pace, sequence of events, and other protected elements therein."

The lawsuit adds that MGM and its predecessors had creative control over the Buckaroo Banzai project and contributed copyrightable elements.

MGM also is asserting that Richter violated a publicity provision of his contract by talking to one film website about MGM's lack of rights to the property. Additionally, Richter and Rauch are said to be in breach of this provision via statements made on Facebook.


Sort of reminds one of a line in The Other End of the Line between an Indian call center worker working New Jersey calls and her supervisor:

Worker: "May I please move out of New Jersey? Everyone keeps swearing at me."

"You know the rules. Everyone starts in New Jersey and works their way out."

***UPDATE. June 10, 2018

A further issue is accuracy of items posted on the internet.

CBS Sunday Morning reported:

And now a page from our "Sunday Morning" Almanac: June 10, 1905, 113 years ago today – the day America's first forest fire lookout tower went into operation on top of Squaw Mountain in Maine, with 19-year-old William Hilton as its watchman.



The first fire lookout strictly for protection of American forests was built in 1902 at Bertha Hill near Headquarters, Idaho.



Originally named Thunder Mountain, Bertha Hill has the distinction of being the first forest fire lookout in the Western U.S., in 1902.



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