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...