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

Conclusion

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.

Footnotes

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

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
23 Sep 2018, Seminar, Chicago, United States

Finnegan is a sponsor of the Intellectual Property Owners Association Annual Meeting, supporting the Women in IP Networking Brunch.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions