One of the most common defenses to patent infringement is that the asserted patent is invalid. The reasons for invalidity regularly range from lack of utility, to incorrect inventorship, and even to fraud (as I’ve recently written about). Often, the defendant asserts that the patent is invalid for lack of novelty or non-obviousness–pointing to some piece of evidence that the defendant says conclusively shows that the invention was already in the public domain before the plaintiff even applied for the patent. That evidence is called invalidating “prior art.”

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.

But despite this expansion, litigants have not yet fully taken advantage of the change. There have been a few recent uses of video as prior art, such as the iconic iPhone keynote speech made by the late Steve Jobs demonstrating a technology described in an Apple patent. Ironically, in commenting on the “bounce-back” effect that was the subject of the patent, Steve Jobs stated, “boy have we patented it.” But Apple failed to patent it fast enough after the speech.

Samsung used clips from Stanley Kubrick’s 2001: A Space Odyssey to argue that Apple’s design patent for the shape of a tablet was invalidating prior art.

Apple really seems to be taking the brunt of video prior art challenges.

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 plaintiff in HVLPO2 had argued that the particular YouTube video in question was uploaded on a random account, so no one interested in the art would have found it. 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, and I recommend this fun cat skateboarding video:

But even though most YouTube videos are generally accessible, not all are available to the public. For example, YouTube videos may be “private” or “unlisted,” potentially removing them from the “otherwise available to the public” category or at least undermining the argument for their accessibility. Thus, as even the court in HVLPO2 noted, the defendant still has to prove the existence of public access to the video prior to the applicable date. This can be accomplished by proffering screenshots of the video in the browser and evidence of that video’s publication date (which is disclosed on the YouTube website and many other video sharing platforms).

Besides the above, there are few other examples of videos (online or otherwise) being used as prior art. This is probably due in part to the current difficulty of searching the vast amount of video and audio–as opposed to text, for example–available on the internet. But as computer learning gets better and better, I expect audiovisual prior art will play a bigger role in both patent prosecution and litigation, so long as that prior art is “otherwise available to the public.”

One month from tomorrow, the most significant change to U.S. patent law in recent history will go into effect.  Since 1790, when the first patent act was signed into law, the U.S. patent system has been a “first to invent” system.  Next month, it will change to a “first inventor to file” system.  The U.S. Patent & Trademark Office just released the final rules and examination guidelines on Wednesday.   Any patent application with an effective filing date on or before March 15, 2013 will be treated under the old “first to invent” rules and any patent application with an effective filing date on or after March 16, 2013 will be treated under the new “first inventor to file” rules.   The change affects both utility patents and design patents.

Now you may be asking, “Martha, why is this such a big deal?”  Well, because these new rules effectively create “a race to the Patent Office” and potentially increase the number of references that can preclude patentability for your claimed invention.  Whether a patent is granted on a patent application largely hinges on whether the claimed invention has been disclosed already in a publicly available reference, or whether it would be obvious to one of ordinary skill in the art to have modified a disclosed method or product in a known way to reach the claimed invention.  Additionally, one can no longer “swear back” to their invention date; if the Examiner cited a reference with a filing date that was earlier than your filing date, but your invention date was earlier than their filing date, you could file an affidavit attesting to your invention date and effectively remove the applicability of  the cited reference.

Under the new “first inventor to file” system, patentability is precluded where the claimed invention was

  • patented or described in a printed publication prior to the effective filing date of the application,
  • disclosed in a patent or published patent application that names different inventors and was filed prior to the effective filing date of the application,
  • on sale or in public use in any country prior to the effective filing date of the application, or
  • otherwise available to the public as of the effective filing date of the application (e.g. a student thesis in a university library, a poster, or electronically posted on the internet).

In the age of the internet and with a more global economy than ever, that’s a lot of potential for invalidating disclosures.  Such disclosures can preclude patentability even if the disclosure was made by the inventors themselves.  The few exceptions to this are disclosures made by the inventors or by another who obtained the information directly or indirectly from the inventors (e.g. the inventors’ employer) no more than one year before the filing date, or disclosures where the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventors or another who obtained the information directly or indirectly.

So what are some potential takeaways are there for your client, or you the designer, or you the idea guy?

  • File smart and file early if you want a patent.
    • Whether you are an individual with a “million dollar” idea or in a management role at a large company, strongly consider filing an application (and file it early) because you can no longer claim patent rights based on your invention date alone.  Better to be penny wise than pound foolish, right?
    • If you develop products for others, be clear in your agreements on ownership and responsibilities for protecting patentable subject matter.
    • If you are in an organization, provide training for all who might create patentable subject matter and establish processes within your organization to capture such patentable subject matter early and make prompt decisions on whether or not to file .
  • Consider publishing your idea or design on the internet or elsewhere, regardless of whether you file a patent application on it or not.
    • Be aware of the one-year grace period on disclosures by the inventors or another who obtained the information directly from the inventors.
    • Likewise, be aware of what is being published about your products and where it’s being published.

Under these new rules, strategy is more important than ever to protect inventive products, methods and ornamental designs.


We here at the DuetsBlog like to make sure that you’re up to speed with any significant changes to intellectual property laws that may affect your rights in whatever may result from the spinning wheels of your noggin.

As with most government regulations, the road to change is a slow one.  We started off last year with fee increases and some relatively minor procedural changes.  Now we’re ramping up to the most significant change  – the controversial change from a “first to invent” system to a “first inventor to file” system – which will be effective March 16, 2013.  I’ll take a separate look at the change from “first to invent” to “first inventor to file” and its potential impact in another blog post.  Today, however, we’re focused on the changes which take effect on September 16, 2012.

1. Third Parties Allowed To Submit Patents, Published Applications, and other Published Documents for Consideration

The Act allows any third party (even anonymously through a registered practitioner) to submit any relevant publications in another’s application for the patent examiner to consider generally before any substantive examination.  Accordingly, one may wish to monitor patent publications on a regular basis and, if possible, submit any prior art for the Examiner’s consideration in a competitor’s application to ensure that all relevant publications are considered during examination.

2. A Second Swipe At Business Method Patents

A transitional post-grant review proceeding has been created specifically to consider the validity of certain business-method patents. It applies to any “patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.”  Some software-related patents may also be exposed to this business method post-grant review.

3.  “Applicant” now can be the Assignee, not the Inventor

Under current practice, the inventors of a patent application are considered the “applicant”, even where the application is filed at the direction of the assignee of the application (typically the inventors’ employer). Under the new rules, the assignee can apply for the patent as the “applicant.”

4. Post-Grant Review Procedures Narrowed and Significantly More Expensive

There are several options for post-grant review of issued patents.  A poorly named “post-grant review” is available within 9 months of the issuance of the patent and the grounds for seeking such review can be any grounds of invalidity, with the exception of the requirement to disclose the best mode in the application.

After 9 months, a party can request an “inter partes review,” which replaces the current inter partes reexamination. Inter partes review of an issued patent is limited to challenges for novelty and non-obviousness where there is a reasonable likelihood that the petitioner will prevail on at least one claim.  Inter partes reexamination fees were $8,800, but the new inter partes review fees are $27,200.

In addition, the Act prohibits a post-grant review and inter partes review if the party filing has filed a related civil action before filing the petition.

5. Patent Owner’s Right To Supplemental Examination

Supplemental examinations are established for a patent owner “to consider, reconsider, and correct information believed to be relevant to the patent.” This new process allows patent owners the right to submit prior art to the USPTO without having to request reissue of the patent or put the patent through the traditional reexamination procedure.  Supplemental examination under this section of the Act is not available, however, if an allegation of invalidity over the subject art has already been made in a legal proceeding.

6. Changes to Patent Trial and Appeal Board

The Board of Patent Appeals and Interferences (BPAI) has been renamed the Patent Trial and Appeal Board (PTAB).  Among other rule changes to appeal practice, the applicant may now appeal to the Court of Appeals for the Federal Circuit (CAFC) from certain Board decisions.