YouTube videos as prior art evidence in patent invalidation

Petitioners are increasingly using YouTube videos in patent invalidation cases as evidence to demonstrate the closest prior art when challenging patentability. An analysis of such cases on the patent re-examination and invalidation page of the China National Intellectual Property Administration (CNIPA) website, and rulings on China Judgments Online offer insights into the admissibility of such videos, as well as issues to consider when using them.

CASE ANALYSIS

In a past patent invalidation case, the petitioner submitted a YouTube video as evidence, claiming the upload date of 2 September 2010. During the oral hearing, the petitioner further produced a notarised statement of downloading online information issued on 8 March 2018 by a Hong Kong law firm. The court rejected the admissibility of the video after it was challenged on the following bases:

• The petitioner could not guarantee the security of the file as the hardware and software environment used to download and store the video were not properly protected against viruses or malware.
• Videos cannot be downloaded directly from YouTube as described by the petitioner, but must be downloaded with assistance from third-party software.
• An examination of the video file’s properties found that it was last modified on 23 September 2015, which was neither the claimed upload time nor the date of issuing the statement. In fact, it was later than the application date of the disputed patent.

A search of the term “YouTube” in invalidation decisions published on the Patent Re-examination and Invalidation page of the CNIPA website returned 12 eligible cases. In eight of them, the videos were found to be true and open, and admitted as prior art evidence when judging patentability. In the four others, it was determined that the openness of the videos (i.e. the date they became publicly available) could not be determined.

While another search of the terms “YouTube” and “Beijing IP Court” on China Judgments Online found conflicting decisions, there remained markedly more cases where YouTube videos were admitted as evidence of prior art than not.

Beijing Intellectual Property Court ruled in Cleveron’s patent invalidation litigation that YouTube was an international video sharing website with adequate online monitoring and supervision, and admitted the video submitted by the petitioner. That decision contrasted with the opinion of the patent re-examination committee of the CNIPA in Invalidation Application Decision No. 38153 (2018) that YouTube, being a public video exchange platform, was not reliable in terms of content or publishing date, and its videos could not be admitted as prior art evidence.

SOME RECOMMENDATIONS

Even with the same type of evidence, results may still vary based on different standards of admissibility. In general, however, YouTube videos stand a good chance of being admitted.

Petitioners of invalidation may confidently submit YouTube videos as evidence, especially if the disputed patent involves design of exterior appearance, for which video evidence is preferable in determining patentability.

As YouTube is inaccessible in mainland China, YouTube videos are simultaneously considered online and extraterritorial evidence. In notarisation, petitioners should take note of the following:

• Notarisation can be done in Hong Kong to save on time and expense;
• Keep the hardware used to download the video and the online environment clean and secure;
• Avoid using private videos;
• Avoid obtaining the video by directly inputting the link, instead search keywords on the YouTube homepage;
• Download the video file with designated software for YouTube; and
• Record every step of the way.

Patentees may also challenge YouTube evidence from the above-mentioned perspectives.

As more YouTube videos are submitted as evidence, courts will gradually form a consensus on their standards of admissibility. This represents a new route to apply for invalidation, but at the same time raises challenges for patentees.