Case: 19-1708 Document: 45 Page: 1 Filed: 09/03/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TWITTER, INC.,
Appellant
v.
VIDSTREAM LLC,
Appellee
______________________
2019-1708, 2019-1709
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
01131, IPR2017-01133.
______________________
Decided: September 3, 2020
______________________
DAVID L. MCCOMBS, Haynes & Boone, LLP, Dallas, TX,
argued for appellant. Also represented by DEBRA JANECE
MCCOMAS; RAGHAV BAJAJ, Austin, TX; THOMAS B. KING,
Costa Mesa, CA.
STEPHANIE DEBROW, Norton Rose Fulbright US LLP,
Austin, TX, argued for appellee. Also represented by
EAGLE HOWARD ROBINSON.
______________________
Case: 19-1708 Document: 45 Page: 2 Filed: 09/03/2020
2 TWITTER, INC. v. VIDSTREAM LLC
Before PROST, Chief Judge, REYNA and HUGHES, Circuit
Judges.
REYNA, Circuit Judge.
In two inter partes review proceedings, the Patent
Trial and Appeal Board found that two patents owned by
VidStream LLC are not unpatentable as obvious. Twitter
argues on appeal that the Board’s determination is con-
trary to law because the Board failed to consider what a
prior art reference suggested to a person of ordinary skill
in the art at the time of the invention and because the
Board ignored Twitter’s arguments and evidence contained
in its reply brief. For the following reasons, we affirm.
BACKGROUND
A. Patents-at-Issue
This appeal arises from two inter partes review (“IPR”)
proceedings wherein the petitioner, Twitter, Inc., (“Twit-
ter”), challenged two patents owned by VidStream LLC
(“VidStream”), U.S. Patent Nos. 8,464,304 (the “’304 pa-
tent”) and 8,601,506 (the “’506 patent”) (collectively “the
challenged patents”). The challenged patents are titled
“Content Creation and Distribution System” and are di-
rected to computer methods and systems for creating and
sharing user-generated video content. ’304 patent at 1:1–2.
The challenged patents contain the same disputed limita-
tion and share essentially the same written description. 1
Figure 2 of the challenged patents, shown below, illus-
trates the patented system at a high level.
1 For purposes of this appeal, we cite to only the
’304 patent.
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TWITTER, INC. v. VIDSTREAM LLC 3
Figure 2
In Figure 2, a mobile device (230) or a computer (232)
having a video camera (234) generates video content. Id.
at 14:30–34. The video content is sent over the internet to
a Content Creation & Distribution System (“CCDS”) (202).
The CCDS (202) makes the content available for display on
the web or as part of a television distribution system (220).
To ensure that user-generated video is suitable for dis-
tribution, e.g., having a certain quality level that is appro-
priate for television programs, the challenged patents
disclose recording video according to “predetermined con-
straints.” Such predetermined constraints can include the
format, bit rate, length of submission, frame rate, etc. Id.
at 13:36–44. Other constraints include parameters such as
“a bit rate and an image resolution sufficient to enable
transcoding of the video data into the format appropriate
for inclusion in the linear television programming trans-
mission.” Id. at 4:36–40. The client device (i.e., mobile
Case: 19-1708 Document: 45 Page: 4 Filed: 09/03/2020
4 TWITTER, INC. v. VIDSTREAM LLC
device (230) or computer (232)) applies these constraints to
the video data it records.
Figure 3 of the challenged patents, shown below, fur-
ther illustrates the CCDS. The interface (300) can serve as
a user-facing front-end of the CCDS, enabling a user to rec-
ord and upload digital content (e.g., digital video) for dis-
tribution. For example, the user can use a mobile device
with a built-in camera and a pre-defined application to gen-
erate digital video content that is streamed to the CCDS
substantially in real time as the content is created.
Figure 3
When the CCDS is implemented as an application in-
stalled on a user device, it can enforce predetermined con-
straints on the captured video such that the video is ready
to be rapidly transcoded for insertion into a linear pro-
gramming time slot. For example, the application can en-
code the video at a sufficient bit rate and resolution to
ensure that the video file can be transcoded to produce
video of sufficient quality to be distributed on the internet.
Id. at 10:56–66.
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TWITTER, INC. v. VIDSTREAM LLC 5
Claim 1 of the ’304 patent, which is representative, il-
lustrates the claimed method:
1. A method performed by data processing appa-
ratus, the method comprising:
receiving video data from a client computing device
at a server system, wherein the video data is cap-
tured using a camera connected to the client com-
puting device in accordance with instructions
executed on the client computing device, wherein
the instructions are provided to the client compu-
ting device by the server system and cause the video
data to be captured in accordance with predeter-
mined constraints and the predetermined con-
straints include a frame rate defined by the
instructions;
automatically transcoding the video data, using a
server included in the server system, into at least
one different format based on at least one of user
credentials associated with a user of the client com-
puting device or attributes associated with the
video data, wherein at least one format of the
transcoded video data defines a video file in a for-
mat appropriate for inclusion in a linear television
programming broadcast; and uploading the trans-
coded video data to a distribution server for distri-
bution.
’304 patent at 27:57–28:10 (disputed limitation empha-
sized). Relevant to this appeal, the challenged patents con-
tain the same disputed limitation: capturing video
according to instructions and parameters that are defined
by a server system.
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6 TWITTER, INC. v. VIDSTREAM LLC
B. Lahti
Lahti 2 is a journal article published approximately five
years before the priority date of the challenged patents.
Lahti describes a video management system that includes
a video server and a mobile camera-phone application
called MobiCon. J.A. 1316 (Abstract). MobiCon allows a
user to capture videos, annotate them with metadata,
specify digital rights management settings, upload videos
over a cellular network, and share the videos with others.
Id. Lahti describes that the MobiCon application is
downloaded over the air to a mobile camera-phone.
J.A. 1320. MobiCon operates on the Candela system
architecture, which was developed as a solution for general
video management and includes tools for video creation,
analysis, annotation, storage, search, and delivery phases.
Id. at 1319. Lahti discloses an operating specification for
capturing a video clip, stating: “[a] new video clip is
captured in Capture Screen using Mobile Media API and it
is recorded according to 3GPP specification using AMR
coding for audio and H.263 at 176x144 pixels size at
15 frames per second for video.” Id. at 1321.
2 Janne Lahti et al., “A Mobile Phone-based Context-
aware Video Management Application,” Multimedia on
Mobile Devices II, Proc. of SPIE-IS&T Electronic Imaging,
SPIE Vol. 6074, 60740O, 2006 (Ex. 1006, J.A. 1316–27)
(“Lahti”).
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TWITTER, INC. v. VIDSTREAM LLC 7
Lahti Figure 3
As shown in Lahti Figure 3, the Upload Client, which
is a mobile Java application, runs on a mobile phone, and
the Upload Gateway, which is implemented as a Java
servlet, runs on the server. Id. at 1320. The system
provides wireless access over a mobile phone network to
enable storing video clips on the server. Id. Within the
Upload Client is the UIManager, which coordinates the
capture, saving, and sending of the video data by the
mobile camera and the relevant messages. Id.
C. Procedural History
Twitter challenged claims 1, 4, 5, 8, 9, 11–17, 19–26,
and 28–30 of the ’304 patent and claims 1, 4–8, 11, 13–15,
23–26, 29, and 30 of the ’506 patent (collectively the “chal-
lenged claims”) as obvious over Lahti. The Patent Trial
and Appeal Board (“Board”) instituted trial on all asserted
grounds of unpatentability and ultimately concluded that
the challenged claims are not obvious over Lahti. Twitter,
Inc. v. VidStream LLC, IPR2017-01131, Paper 71, at 25
(P.T.A.B. Jan. 13, 2019) (J.A. 1–32); Twitter, Inc. v.
Case: 19-1708 Document: 45 Page: 8 Filed: 09/03/2020
8 TWITTER, INC. v. VIDSTREAM LLC
VidStream LLC, IPR2017-01133, Paper 68, at 26 (P.T.A.B.
Jan. 23, 2019) (J.A. 33–62). 3
Twitter argued that the challenged claims are invalid
in part because Lahti discloses capturing video according
to predetermined constraints provided by a server. Twitter
argued that a skilled artisan “would understand that a mo-
bile application constitutes software code that controls the
operation of a device when executed on that device.”
J.A. 176 (citing J.A. 1119–20). Twitter contended that a
skilled artisan would understand that MobiCon provides to
the mobile device in Lahti the claimed “predetermined con-
straints” via video capture parameters such as video for-
mat (H.263), video resolution (176x144 pixels) and video
frame rate (15 frames per second). J.A. 177 (citing
J.A. 1119–20, ¶¶ 95–99). Twitter relied on the testimony
of its expert, Dr. Houh, who explained that the “MobiCon
app disclosed in Lahti . . . describes the parameters pro-
vided by the app,” which, in turn, was provided by the
server. J.A. 1120, ¶ 97.
VidStream countered that “Lahti does not disclose or
suggest that MobiCon has any impact or control over any
of the parameters by which a mobile device captures video
data, including a frame rate used to capture video data.”
J.A. 386–87. According to VidStream, “all digital video
data captured by camera phones or digital cameras neces-
sarily inherently has a format (e.g., H.263), a resolution
(e.g., 176x144 pixels), and a frame rate (e.g., 15 frames per
second).” J.A. 387–88. VidStream argued that “in 2006 it
was common for camera phones to natively capture video
3 Because the Final Written Decision for each IPR is
substantively identical, we cite to only the Final Written
Decision in IPR2017-01131 (J.A. 1–32) unless otherwise
stated.
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TWITTER, INC. v. VIDSTREAM LLC 9
data in accordance with the Third Generation Partnership
Project (‘3GPP’) specification.” J.A. 388.
VidStream also argued that the recitation of video cap-
ture parameters in Lahti “is equally consistent with cap-
turing video using a device’s native capabilities, rather
than capturing video according to parameters set by the
MobiCon application.” J.A. 388, J.A. 2427–28. VidStream
argued that “a POSITA reviewing Lahti would not have
viewed Lahti as disclosing that the MobiCon application
actually governed video capture parameters.” J.A. 400.
In its reply brief, Twitter argued that VidStream’s the-
ories were “based on a mischaracterization of how a person
having ordinary skill in the art would understand the
teachings of Lahti.” J.A. 421. Twitter argued that mobile
phones, both at the time of Lahti’s publication (2006) and
on the date of the invention (2011), were capable of record-
ing at multiple resolutions and frame rates and that the
Symbian operating system family used by the Nokia 6630
(the mobile phone used in Lahti) expressly gave application
developers the ability to specify which frame rate to use
during video recording.
Twitter also argued that if MobiCon did not affect the
manner in which a video was recorded, by providing the
video capture parameters, there would be no reason for
Lahti to disclose the identified frame rate. Twitter argued
that a skilled artisan would have understood that, given
the multitude of devices “capable of recording at multiple
resolutions and frame rates,” software development kits
used by developers of video management applications such
as MobiCon “could be programmed to specify certain pa-
rameters, including the frame rate at which video record-
ing should be made,” supporting Lahti’s teachings of
specifying the frame rate parameter. J.A. 427.
The Board permitted VidStream to file a sur-reply
brief. See J.A. 501. VidStream asserted that Twitter im-
properly-added new arguments and evidence in its reply
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10 TWITTER, INC. v. VIDSTREAM LLC
brief. J.A. 505. For example, VidStream argued that Twit-
ter’s discussion of a person of ordinary skill in the art’s un-
derstanding of application programming interfaces and
software development kits was a new argument. J.A. 509.
VidStream also characterized the discussion of the Sym-
bian operating system as “new argument.” J.A. 510.
In its Final Written Decision, the Board found that
“Lahti does not expressly state that the predetermined con-
straints, including frame rate, come from the MobiCon ap-
plication.” J.A. 17 (emphasis added). The Board concluded
that Twitter “fail[ed] to show by a preponderance of the ev-
idence that Lahti meets the disputed phrases.” J.A. 25.
The Board noted that all digital video captured by a camera
phone or digital camera necessarily captures video under
certain operating specifications including format, resolu-
tion, and frame rate. See J.A. 17. Although the Board rec-
ognized that Lahti disclosed use of the 3GPP specification,
which utilizes H.263 coding at 176x144 pixels and
15 frames per second, the Board recognized that the mobile
phone utilized in Lahti, the Nokia 6630, natively operates
under these same specifications. See J.A. 17–18. The
Board thus determined that the video recording parame-
ters described in Lahti could have come from either Mobi-
Con or from the mobile phone’s native recording
parameters. J.A. 18.
Although the Board further asserted that it “need not
and do[es] not consider the new evidence and new argu-
ments made in [Twitter’s] Reply,” the Board addressed
Twitter’s reply brief noting that a person having ordinary
skill in the art would understand Lahti to teach changing
mobile phone settings using software developer kits and
that the UIManager of MobiCon handles all the capturing
and recording of videos. J.A. 20–22. The Board found that
Twitter “has not provided sufficient evidence for [the
Board] to conclude that the described parameters are part
of the instructions from the MobiCon application as op-
posed to the native mobile device.” J.A. 25.
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TWITTER, INC. v. VIDSTREAM LLC 11
DISCUSSION
Twitter contends that the Board’s Final Written Deci-
sion of no unpatentability is contrary to law on two
grounds. 4 First, Twitter argues that the Board erred by
considering only what Lahti expressly teaches and failed to
consider what Lahti would suggest to a person of skill in
the art. In addition, Twitter asserts that the Board erred
when it failed to consider the arguments and evidence
Twitter presented in its reply brief.
We review de novo the Board’s conclusions on obvious-
ness. In re Kotzab,
217 F.3d 1365, 1369 (Fed. Cir. 2000).
Our case law is clear that when conducting an obviousness
analysis, the Board must consider a prior art reference “not
only for what it expressly teaches, but also for what it fairly
suggests.” Bradium Techs. LLC v. Iancu,
923 F.3d 1032,
1049 (Fed. Cir. 2019) (quoting In re Baird,
16 F.3d 380, 383
(Fed. Cir. 1994)). With that instruction, we first review
whether the Board considered Lahti for what it fairly sug-
gests to a skilled artisan. We conclude that it did.
Twitter raised several arguments regarding what
Lahti teaches or suggests to a skilled artisan, and the
Board considered and rejected each of them. See J.A. 21–24
(citing J.A. 422–25 (Twitter’s reply brief). For example, the
Board considered Twitter’s argument that MobiCon’s
UIManager, “a controller component,” suggests to a skilled
artisan that MobiCon controls at least “the features with
which [the UIManager] interacts.” See J.A. 21. The Board
4 See Appellant Br. at 28 (“The Decisions fail to ask
the correct legal question . . . . This fundamental error in
the legal standards used to determine obviousness requires
reversal.”); Appellant Reply Br. at 22 (explaining that
“Twitter did not argue or contend that the Board’s Deci-
sions fail to meet the substantial evidence standard. . . .
Twitter argued legal error”).
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12 TWITTER, INC. v. VIDSTREAM LLC
rejected this argument and found that Twitter’s expert,
Dr. Houh, failed to explain “what Lahti’s MobiCon
UIManager includes or how it works.”
Id. The Board
reasoned that Dr. Houh’s conclusion—that “Lahti teaches
a POSITA that MobiCon . . . control[s] the video capture
process” because the UIManager “handle[s]” and
“coordinates the video capture” (J.A. 2399–400, Ex. 1052 ¶
17)—fails to show whether it is the UIManager or the
phone’s native video-capturing capabilities that control
video capture. J.A. 21–22. Additionally, the Board
addressed Twitter’s argument that Dr. Olivier,
VidStream’s expert, “conceded that [Lahti suggests that]
MobiCon’s UIManager controlled at least some aspects of
the video capture process.” See J.A. 21 (internal quotation
marks omitted). The Board reviewed those portions of Dr.
Olivier’s testimony on which Twitter relied and found that
they did not support Twitter’s argument. J.A. 21.
Twitter incorrectly suggests that the Board adopted
VidStream’s argument that Lahti “is equally consistent
with capturing video using a device’s native capabilities,
rather than capturing video according to parameters set by
the MobiCon application.” 5 The Board made no finding
that it is equally possible that MobiCon either utilizes the
mobile phone’s native video-capturing capabilities or that
it controls the phone’s video-capturing capabilities. In-
stead, the Board explained that while either the UIMan-
ager or the phone’s native video-capturing capabilities
“could” control the predetermined parameters in Lahti,
Twitter failed to show that Lahti itself discloses or suggests
a UIManager that controls the parameters. See J.A. 22–
25.
5 Appellant Br. at 31–32 (stating that “[t]he Board
agreed with [VidStream’s] arguments and found this insuf-
ficient to show how Lahti meets the disputed phrase”) (ci-
tation and internal quotation marks omitted).
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TWITTER, INC. v. VIDSTREAM LLC 13
Twitter misapprehends the evidentiary standard for
proving unpatentability at the Board. While, as noted
above, it is correct that a reference must be considered for
what it fairly teaches or suggests to a skilled artisan, In re
Baird,
16 F.3d at 383, it is the petitioner’s burden to estab-
lish the scope and content of a prior art reference by a pre-
ponderance of the evidence. See
35 U.S.C. § 316(e) (“the
petitioner shall have the burden of proving a proposition of
unpatentability by a preponderance of the evidence.”); see
also
37 C.F.R. § 42.1(d) (“The default evidentiary standard
is a preponderance of the evidence.”). The preponderant
evidence standard requires the party carrying the burden
of proof to show that the fact to be proven is “more probable
than not.” Velander v. Garner,
348 F.3d 1359, 1370, 1376
(Fed. Cir. 2003). Here, it was Twitter’s burden to establish
that it was more probable than not that Lahti fairly teaches
or suggests to a skilled artisan the predetermined con-
straints limitation. We conclude that the Board properly
considered this question and applied the proper standard
when the Board found that the suggestion that Lahti’s UI-
Manager could control the predetermined parameters does
not fairly suggest to a skilled artisan that it would control
the predetermined parameters.
Twitter also argues that the Board erred by analyzing
obviousness as of the date of Lahti’s publication (2006) ra-
ther than the date of the invention (2011). Twitter argues
that the Board improperly disregarded Dr. Houh’s testi-
mony regarding technological developments in the mobile
phone industry and “the impact those changes would have
had on a person of ordinary skill in the art’s understanding
of Lahti.” Appellant Br. at 36–37. Twitter argues that, in
light of these purported advancements, a skilled artisan
would have understood “that mobile phones in 2011 were
capable of recording at resolutions much higher than what
was disclosed in Lahti” and, thus, “would not read Lahti as
limited to the native frame rate of the device.”
Id. at 37–
38. VidStream responds that the Board rejected Twitter’s
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14 TWITTER, INC. v. VIDSTREAM LLC
argument because it fails to address whether a skilled ar-
tisan would understand that the MobiCon application, as
opposed to the native mobile device, provided the video-
capture parameters discussed in Lahti. Appellee Br. at 23.
We conclude that the Board did not improperly limit its ob-
viousness analysis as Twitter contends. The Board consid-
ered the arguments Twitter raised to the Board and
rejected them because, as explained above, it found that
Dr. Houh’s analysis failed to establish that, in Lahti, Mo-
biCon controlled the phone’s video-recording capabilities.
J.A. 24–25.
Finally, Twitter argues that the Board erred by declin-
ing to consider evidence and arguments first presented by
Twitter in its reply brief. Appellant Br. at 42–49. We see
no merit in Twitter’s argument. The Board made clear that
it did not disregard the arguments and evidence presented
in Twitter’s reply brief by stating that “the Reply argu-
ments and evidence, along with the Petition arguments
and evidence as a whole” fail to demonstrate that “Lahti
meets the disputed claim phrases.” J.A. 25; see also J.A.
20–25 (setting forth the Board’s analysis of the arguments
and evidence in Twitter’s reply brief).
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the reasons stated above,
we conclude that the Board’s Final Written Decisions are
not contrary to law.
AFFIRMED
