United States: Hearsay Hurdle: Proving Nonpatent Literature Is Prior Art

Validity challenges in inter partes review and post-grant review at the Patent Trial and Appeal Board often rely on nonpatent literature publications that petitioners must show to be "prior art."1 This presents a twofold challenge for petitioners: First, they must provide evidence that the nonpatent literature was "publicly accessible,"2 and second, they must ensure that the nonpatent literature and supporting evidence complies with the Federal Rules of Evidence, including hearsay and authentication rules.3 The nonpatent literature topic has become a hot one leading the PTAB to dedicate its "boardside chat" session on Dec. 7, 2017, to discussing public accessibility decisions and the types of evidence petitioners may present.4 But, the second issue, whether the evidence comports with the FRE, may be less familiar to parties at the PTAB. Unlike in original examination and ex parte re-examination where the FRE do not apply, the  U.S. Patent and Trademark Office expressly adopted the FRE for AIA trials.5 Bright-line guidance has yet to emerge from the PTAB on applying the FRE to nonpatent literature, or how it may differ from district courts in this area. This article reviews exemplary cases applying the FRE's hearsay rules in both venues to highlight the various precedent litigants should consider.

At the PTAB

Petitioners, in some AIA trials, have overcome FRE 802 hearsay challenges to alleged publication dates printed on the nonpatent literature or associated with the nonpatent literature both with and without testimonial evidence. In Ericsson Inc. v. Intellectual Ventures I LLC,6 without the need for testimonial evidence, the PTAB admitted evidence of an Institute of Electrical and Electronics Engineers publication's copyright date under FRE 803(17) as a "list[], etc., generally relied on by the pubic or by persons in particular occupations" noting that "[the publisher,] IEEE is a well-known, reputable compiler and publisher of scientific and technical publications."7 Alternatively, the PTAB explained the copyright line of the IEEE publication has "equivalent circumstantial guarantees of trustworthiness," in part because it is added by the publisher and not the author, and would be admissible under the residual exception to hearsay.8

In EMC Corp. v. PersonalWeb Technologies LLC,9 the PTAB denied the patent owner's motion to exclude, rejecting the argument that supporting testimonial evidence is required from an individual with personal knowledge of the nonpatent literature's existence prior to the critical date, such as the author or an individual who reviewed the document prior to the critical date.10 Here, the petitioner did not have such testimonial evidence, and instead relied on (1) the copyright date printed on the document; (2) testimonial evidence from the system operator of the online bulletin board where the document was allegedly posted stating that he believed that document was posted in the relevant time period; and (3) testimony and documentation from an Internet archivist who verified that the reference-in-question matches a copy having a time stamp from 1993, which he archived from a CD-ROM bearing a title indicating it was from 1993.11 Ultimately, the PTAB found the testimonial evidence persuasive to establish the publication date and did not rely on the copyright date on the document or the "posted date."12 Thus, the PTAB did not need to examine whether the copyright or the "posted date" were hearsay because it had non-hearsay evidence.13

The PTAB has also denied motions to exclude based on the ancient document exception (FRE 803(16)) and the public records exception (FRE 803(8)). For example, in QSC Audio Products LLC v. Crest Audio Inc., the PTAB denied a hearsay challenge in view of "information printed on the cover page... namely that [the paper] was 'presented' at an AES convention in 1971" citing both the ancient document and residual exceptions.14 And, in Compass Bank v. Intellectual Ventures II LLC,15 the PTAB decided that the dates in certain documents for authenticating and showing public accessibility were admissible hearsay under the ancient documents exception (FRE 803(16)), the residual exception (FRE 807), and the public records exception (FRE 803(8)).16 Further, in Apple Inc. v. VirnetX Inc.,17 the PTAB found that magazine articles almost old enough to fall within the ancient documents exception had "circumstantial guarantees of trustworthiness as written prior to litigation by disinterested parties in periodical trade magazines."18

On the other hand, in Standard Innovation Corp. v. Lelo Inc.,19 a hearsay challenge proved successful for the patent owner. There, the PTAB found the copyright date ("2003-2013 LEOi AB") printed on the document was hearsay, rejecting the argument that it should be considered a party admission under FRE 801(d)(2), because the petitioner provided no evidence linking "Leoli AB" and the patent owner, "Lelo Inc."20 The PTAB also rejected the petitioner's argument applying the residual exception stating that "[t]he residual exception to the hearsay rule is to be reserved for 'exceptional cases,' and is not 'a broad license on trial judges to admit hearsay statements that do not fall within one of the other exceptions.'"21 Similarly, in ServiceNow Inc. v. Hewlett-Packard Co., the board denied institution, finding that a "copyright notice[ was] entitled to no greater weight than that afforded to hearsay in determining public accessibility"22 despite recognizing that for institution, copyright notices have been accepted as prima facie evidence of publication.23

In District Court

Litigants have also found mixed results in district court with hearsay challenges to nonpatent literature. In Hilgraeve Inc. v. Symantec Corp., the Eastern District of Michigan held that the copyright date (as well as the creation and printing dates) associated with certain software were hearsay.24 The court did not consider any particular exceptions to hearsay, and held that the dates were offered to prove the truth that the documents were published on a specific date, rendering them inadmissible hearsay by definition.25 On the other hand, in U.S. ex rel. Adams v. Wells Fargo Bank (a nonpatent case where publication was an issue), the District of Nevada took a different approach, holding that a copyright date was not hearsay because it was not offered for the truth of the statements in the document.26

Like the PTAB, district courts have applied exceptions to the hearsay rules when finding admissibility. For example, the Eastern District of Michigan applied the residual exception in Symantec Corp. v. Computer Associates International when admitting an embedded copyright date in the computer software in question, as well as contemporaneous Usenet postings by an individual stating that he had posted a copy of the programs on the internet.27 There, after careful evaluation, the court found the copyright date was adequately trustworthy to admit under the residual exception.28


As the cases demonstrate for both tribunals, a patent challenger increases its likelihood of surviving a hearsay challenge to the date of a nonpatent literature by relying on corroborating evidence. In the absence of witnesses with personal knowledge to testify at trial, parties should carefully review the exceptions to hearsay to determine their chances for success because both tribunals appear willing to admit documents under the exceptions. The FRE and case law applying the rules deserves careful study with the possibility of a single document's admissibility determining the fate of a validity challenge, an FRE challenge can present a substantial obstacle and a powerful tool for both parties.


1 In re Magnum Oil Tools Int'l, Ltd

, 829 F.3d 1364, 1375 (Fed. Cir. 2016) ("In an inter partes review, the burden of persuasion is on the petitioner to prove 'unpatentability by a preponderance of the evidence,' 35 U.S.C. § 316(e), and that burden never shifts to the patentee.").

2 Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (explaining that "'public accessibility' has been called the touchstone in determining whether a reference constitutes a 'printed publication'" (citations omitted)); see also In re Wyer, 655 F.2d 221, 227 (C.C.P.A. 1981).

3 37 C.F.R. § 42.62(b) (2012).

4 Best Practices for Proving a Document Is a Printed Publication, USPTO 2017 PTAB "Boardside Chat" Webinar Series, Dec. 7, 2017, available at https://www.uspto.gov/sites/default/files/documents/boardside_chat_on_prior_art_12_7_17.pdf (last visited Dec. 20, 2017).

5 37 C.F.R. § 42.62 (2012).

6 IPR2014-00527, Paper No. 41 (P.T.A.B. May 18, 2015).

7 Id. at 10–11 (declining to exclude the document where the only evidence of publication was the IEEE copyright line on page 1 of the document).

8 Id. at 11. Rule 807 allows hearsay evidence to be admitted even if it is not within an established hearsay exception if the evidence is trustworthy, probative of a material fact, and admitting the evidence is in the interests of justice. See Fed. R. Evid. 807 (allowing admission if "(1) the statement has equivalent circumstantial guarantees of trustworthiness; (2) it is offered as evidence of a material fact; (3) it is more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts; and (4) admitting it will best serve the purposes of these rules and the interests of justice.").

9 IPR2013-00086, Paper No. 66 (P.T.A.B. May 15, 2014), aff'd, 612 F. App'x 611 (Fed. Cir. 2015).

10 Id. at 26–27.

11 Id. at 30–31; Id. at Ex. 1041 (bulletin board operator declaration); Ex. 1082 (Internet archivist declaration).

12 Id. at 32.

13 Id. at 32–33; see also Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447, Paper No. 34 at 43–44 (P.T.A.B. Mar. 9, 2016) (addressing sufficiency of "printed publication" evidence separately from evidentiary issues and stating "[t]he fact that the document bears a date is not hearsay"), aff'd, 686 F. App'x 976 (Fed. Cir. 2017).

14 QSC Audio Prods., LLC v. Crest Audio, Inc., IPR2014-00129, Paper No. 41 at 9–11 (P.T.A.B. Apr. 29, 2015) (noting that copyright date was hearsay but "qualifies as an ancient document").

15 IPR2014-00724, Paper No. 41 (P.T.A.B. Nov. 5, 2015).

16 Id. at 58.

17 IPR2016-00332, Paper No. 29 (P.T.A.B. June 22, 2017).

18 Id. at 81–85 (admitting articles submitted by petitioner in support of public availability of other references under Rule 807); see also Ericsson Inc. v. Intellectual Ventures I LLC, IPR2014-01149, Paper No. 68 at 14–16 (P.T.A.B. Dec. 9, 2015) (admitting third party statements regarding uploading of document to Internet repeated by librarian in testimony supporting public availability of document under Rule 807).

19 Standard Innovation Corp. v. Lelo, Inc., IPR2014-00148, Paper No. 41 (P.T.A.B. Apr. 23, 2015).

20 Id. at 15.

21 Id. (quoting Conoco Inc. v. Dep't of Energy, 99 F.3d 387, 392 (Fed. Cir. 1996)).

22 ServiceNow, Inc. v. Hewlett-Packard Co., IPR2015-00707, Paper No. 14 at 9–10 (P.T.A.B. Nov. 2, 2015).

23 ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00707, Paper No. 12 at 17 (P.T.A.B. Aug. 26, 2015).

24 Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d 964, 974–75 (E.D. Mich. 2003).

25 Id.

26 See, e.g., United States ex rel. Adams v. Wells Fargo Bank Nat'l Ass'n, No. 2:11-cv-00535-RCJ-PAL, 2013 WL 6506732, at *5 (D. Nev. Dec. 11, 2013).

27 Symantec Corp. v. Comput. Assocs. Int'l, No. 02-CV-73740-DT, 2006 WL 3950278, at *7–9 (E.D. Mich. Aug. 31, 2006), vacated on other grounds, 522 F.3d 1279 (Fed. Cir. 2008).

28 Id.

Previously published in Law360

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