How Did We Find Prior-Art in Youtube’s Video Demonstrations
One of the most common strategies to save yourself from a patent infringement case is to invalidate the asserted patent. The defendant asserts that the patent is invalid by claiming that the invention was already known before the plaintiff applied for the patent using invalidating prior arts. Prior art can invalidate a patent which was otherwise valid. Prior art searches are crucial specially in litigation cases. A miss of even a single prior art evidence can lead to millions of dollars loss to a company. Prior art evidence is no longer limited to conventional publications and research-papers. Instead, other forms of multimedia have come into picture. Videos, movies, recordings are also eligible as prior art if they are publicly available.
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Can Youtube Videos be Used as Prior Arts?
Indeed! Youtube videos can be used as prior arts. YouTube videos have been cited as prior arts in the US which has been used by examiners to reject claims of the patent application. The USPTO’s training guide: Slide 15 specifically teaches that YouTube videos are acceptable form of prior art. Also, there have been several patent litigations cases where YouTube videos were used as prior arts for e.g., Apple vs. Samsung case where these companies were fighting for a design patent. Apple claimed that Samsung copied the design of the iPad for Galaxy Tab. Samsung used video clips from “Stanley Kubrick’s 2001: A Space Odyssey”, a science fiction film to invalidate the Apple’s design patent.
Struggle of finding a strong prior art is not new for any IP consultant or litigator. Now, in this section we will share one of the invalidity cases, where we used Youtube’s Video Demonstrations as a prior art.
- Case Overview
In this case, we were looking for a specific structure of an eye mask in which LED lights were disposed at a particular position which was at a particular angle with respect to the lenses.
- Conventional approach
To find a prior art we followed the conventional approach i.e., brainstormed keywords and compiled a list of keywords that can be used in connection to the patent. Then, we prepared some search strings using those keywords and did keyword-based searches. We also did class-based searches, assignee-based searches, inventor-based searches. We also searched for non-patent literatures.
After all these search approaches We were unable to find strong or promising results that could demonstrate the specific structure that we were looking for.
We were then stuck and worried but still not gave up. We re-scanned all the leads that we got and tried to fill the gaps. We listed all the companies that were working in that specific domain and were manufacturing eyes masks with LED lights in them. As the structure was not clearly described in any of the documents, we started watching Youtube videos on the products that we found as leads and guess what? We found three products, whose structure was demonstrated in the Youtube videos! From that day we never skip any source for searching and searching for video demonstrations from Youtube is included in the approaches which we follow for prior-art searches.
Steps for submitting a YouTube video as a prior-art:
- Capturing screenshots of the video playing in the browser. The URL of the video and the date of upload must be visible in the screenshots.
- Collapse all the screenshots in a single document in an increasing order with respect to time.
- Indicate the timestamp below each screenshot to have a track of when something is happening. Using timestamp you can cite a particular time when the most crucial evidence is present.
- Provide video captions using Google’s Automatic Captioning service in YouTube.
- Submit the video as a link to the video or a video tape/DVD.
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