Federal Circuit Affirms Public Availability Of Foreign Publication
On November 7, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a Patent Trial and Appeal Board (“PTAB”) decision finding invalidity on obviousness grounds. Telefonaktiebolaget LM Ericsson v. TCL Corp. et al., __ F.3d __ (Fed. Cir. Nov. 7, 2019). The CAFC ruled that the PTAB did not abuse its discretion in admitting late-submitted evidence regarding the public availability of a foreign publication and in finding that the foreign publication was available as prior art.
Telefonaktiebolaget LM Ericsson owns U.S. Patent No. 6,029,052 (“the ’052 patent”), which claims a “direct conversion receiver” for wireless communication systems. The ’052 patent was filed on July 1, 1997. Under pre-AIA 35 U.S.C. § 102(b), therefore, publications available before July 1, 1996, are available as prior art to the ’052 patent.
In June and July 2015, TCL Corporation and certain related entities filed two petitions for inter partes review (“IPR”) of certain claims of the ’052 patent. Their primary obviousness reference was an article published in the May/June 1996 issue of a German technical journal. Both IPRs were instituted.
The patent owner disputed that the article is available as prior art, providing evidence that the May/June 1996 issue of the journal did not reach the UCLA library until October 1996. Petitioners submitted a letter from a librarian as evidence that the May/June 1996 issue was available to the public at a university library in Hannover starting June 19, 1996. The patent owner objected to the letter on hearsay grounds, and the petitioners withdrew the letter because the librarian declined to provide a sworn statement or testify in the United States.
Six months after institution, petitioners moved to submit the sworn declaration of a second librarian as evidence that the May/June 1996 issue was inventoried at a university library in Darmstadt, Germany on June 18, 1996, and would have been available to the public 1-2 days thereafter, if standard procedures at the time were followed. The PTAB admitted the article, found that it was available as prior art, and found that the ’052 patent was obvious based on the article. The patent owner appealed.
On appeal, the patent owner first argued that the PTAB abused its discretion in considering the second librarian’s declaration because petitioners were not diligent in obtaining it. IPR petitioners are required to submit sufficient evidence of invalidity at the petition stage, but can move for consideration of late-submitted evidence if the evidence “reasonably could not have been obtained earlier” and consideration would be in the interests of justice. The PTAB found that consideration of the second librarian’s declaration would be in the interest of justice, pointing to petitioners’ evidence about the difficulty of finding a witness with personal knowledge who was willing to sign a sworn declaration and to testify in the United States, but allowed the patent owner to depose the second librarian and to respond to the substance of the article. The Federal Circuit affirmed, holding that “when the challenged evidence is reasonably viewed as material, and the opponent has adequate opportunity to respond and to produce contrary evidence, the interest of justice weighs on the side of admitting the evidence.”
The patent owner also argued that shelving at a public library alone is insufficient to establish public availability of the article. The Federal Circuit found that the facts were distinguishable from cases in which a single, uncatalogued copy of a document was shelved in a library. The Federal Circuit also found that substantial evidence supported the PTAB’s ruling that the article was publicly available, noting, in particular, the PTAB’s finding that the article was published in a periodical that had been in print for more than 30 years as of the 1996 critical date, “and presumably articles within an issue were treated as a public disclosure of information.”