Saturday, November 28, 2020

VidStream loses at CAFC: matters of "what is" prior art. In re Hall revisited.

The outcome 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 VidStream appeals, arguing that the Board erred in finding that a book authored by Anselm Bradford and Paul Haine2 (“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. Of standards for evaluating prior art: Whether a document is prior art under 35 U.S.C. § 102(a) is a legal determination, based on the specific 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 evidence. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015). Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate 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 evidence 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 discretion arises if the ruling: “(1) is clearly unreasonable, arbitrary, 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). (...) “‘[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 extent 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 original) (internal quotation marks omitted). “Whether a reference 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). (...) When the status of a reference is reasonably challenged, the provider of the reference has the burden of establishing 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 reference 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 Klopfenstein, 380 F.3d at 1350)). The Board found that the November 8, 2011 date of first publication, stated in the Copyright Office’s Registration Certificate, supports the 2011 copyright date of the copy of Bradford obtained from the Library of Congress and “is consistent with Bradford being for sale on Amazon in December 2011,” and “indicates it was published 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 public). When there is an established publisher there is a presumption 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,, “supports that Bradford was publicly accessible in 2011, and, in particular, 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 submitted, and found: Although no one piece of evidence definitively establishes 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 established 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 December 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 version (or versions) of Bradford other than the version . . . in Twitter’s IPR petition,” VidStream Br. 9 (emphasis removed). VidStream states that the Board “departed from the specific grounds of unpatentability set forth in the petitions and thus exceeded its statutory authority.” Id. The CAFC noted of the exclusion issue: The Board denied VidStream’s Motion to Exclude, holding that it was appropriate to permit Twitter to respond to VidStream’s challenge by providing additional evidence 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 correct answer.

Thursday, November 19, 2020


GSK lost its appeal at the CAFC: Following trial, a jury in the United States District Court for the District of Delaware found that defendants GlaxoSmithKline LLC and Glaxo Group Limited (collectively, “GSK”) infringed U.S. Patent No. 8,303,991 (“the ’991 patent”), owned by plaintiff Vectura Limited, and that the patent was not invalid. The district court denied GSK’s post-trial motions for judgment as a matter of law and a new trial. GSK now appeals from the judgment against it. We affirm. The need to object: The district court noted that GSK had not filed a pretrial Daubert motion. See Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993). For that reason, the court determined that GSK had waived its general objections to Ms. Schenk’s built-in apportionment testimony and would be required to object to any particular question asked of her. However, the court made clear that it did not regard GSK as having waived its objection to the argument that “it’s just pennies on the dollar, so what’s the big deal?” The court added, “I don’t think the sales should be in any way emphasized beyond what is strictly required by the law. So if I hear that happening, I will make my own objection and I will sustain it because that should not be an argument.” J.A. 1437–40. Subsequently, Ms. Schenk provided testimony on damages, in which she referred several times to GSK’s U.S. sales. GSK did not object to those references or to the demonstrative exhibits that included the dollar amount of those sales. During GSK’s case, its damages expert, Dr. Kerr, testified that he thought Vectura’s three percent royalty rate was “holding GSK over a barrel.” J.A. 1886. On cross-examination, Vectura’s counsel challenged that statement, saying, “so it’s your testimony that a three-percent royalty would be putting GSK over a barrel when they had $3 billion worth of infringing product at stake?” J.A. 1887. At that point, the trial judge interceded, noting that he had said that he would police excessive references to the sales amounts. He added: “Let’s not talk any more about [the] 3 billion figure.” J.A. 1888. There was no further reference at trial to the amount of GSK’s sales. Following the close of the evidence, the court instructed the parties not to refer to the overall sales figure during closing arguments. In his closing argument, Vectura’s counsel referred to GSK’s profits, but not the amount of its sales. GSK did not object to counsel’s closing argument. In its opinion on the motion for judgment as a matter of law and for a new trial, the district court found that Vectura had “repeatedly emphasized the amount of revenues made by Defendants and the relative smallness of the damages award they were requesting,” and that its conduct in that regard was improper. Vectura, 397 F. Supp. 3d at 594. However, the court agreed with Vectura that, unlike in most cases in which there was no legitimate reason for the jury to hear large total revenue figures, in this case “there was no smallest salable patent-practicing unit, and the total revenue was an appropriate base that the jury needed to hear to understand Plaintiff’s damages expert’s analysis.” Id. at 596. For that reason, the court concluded, “I do not find the introduction of the total revenue figure to be so prejudicial that the damages verdict ‘cries out to be overturned.’” Id.