From denying a famous hedge fund manager’s IPR petitions to upholding all claims at final written decision, evidentiary issues alone have decided some PTAB trial proceedings. Even with such impressive results, evidentiary issues have not garnered much air time. In fact, the Patent Trial and Appeal Board (PTAB) has routinely ignored and denied evidentiary challenges. To know where to focus your attack – or shore up your petition – we will explain some evidentiary issues that have decided PTAB proceedings.
Show Me the Prior Art
Hedge fund manager Kyle Bass’s first few world-famous IPR petitions were denied on evidentiary issues. In those petitions, the Coalition for Affordable Drugs sought to use two posters that were presented in meetings as prior art. The patent owner, in its preliminary response, argued that the posters did not qualify as prior art printed publications.
The PTAB agreed and refused to institute the IPRs, finding insufficient evidence to show that the posters were publicly accessible to qualify as “printed publications” under the patent statutes.
The factors it considered included
(a) how long the posters were presented at meetings; (b) the expertise of the audience viewing the posters; (c) the expectation that the displayed material would be copied; and (d) the ease of copying the displayed material.
Federal Rules of Evidence Apply
The Federal Rules of Evidence require authentication of documents – proof that a presented item is what it purports to be. Authentication has crept into PTAB proceedings on various occasions, commonly in the analysis of webpages as prior art.
For example, an oft-used prior art source is the Wayback Machine website. To use information from the Wayback Machine as evidence, you must authenticate the webpages. Authentication may be done through testimony regarding the functionality of the Wayback Machine, or testimony from a witness having personal knowledge of the webpages. Failure to authenticate webpages leads to exclusion of the evidence. Lack of authentication has been case dispositive where the Wayback Machine was used to provide either prior art content or a date for the prior art disclosure.
Similar issues have arisen with clinical trials posted on the ClinicalTrials.gov website. In at least one case, the PTAB rejected the website evidence because its content could not be authenticated as of its asserted date of publication. The PTAB faulted the challenger for not providing a witness with personal knowledge or other evidence of the public accessibility or dissemination of the document as of the critical date.
The import of the Federal Rules of Evidence includes the rule against hearsay. Out-of-court statements offered for their truth are inadmissible absent an exception to the rule. As with authentication, hearsay has been a factor with Internet evidence.
For example, in one matter, hearsay was used to exclude the use of dates printed on websites to prove when the information on the websites was publicly available. The dates on the website included dates next to a copyright notice and dates within the text describing pictures. The PTAB found these dates were out-of-court statements offered for their truth and not subject to any hearsay exception. With the loss of the printed dates, the websites could not be invalidating prior art.
Be Mindful of PTAB Rules
The PTAB has its own specific trial practice rules, which have been case dispositive. For example, the rules require that a non-English exhibit must include both a translation and an affidavit attesting to the accuracy of the translation. This rule becomes important when non-English prior art is used as a primary reference to invalidate patents.
In one case, the PTAB excluded the translation of a non-English foreign patent application because no affidavit was filed attesting to the accuracy of the translation. Because the translation was excluded, the PTAB only looked to the drawing of the patent application and an expert’s declaration regarding the reference. These sources did not provide adequate evidence to invalidate the claims.
Evidentiary issues cannot be overlooked in PTAB trials. Missteps have been case dispositive. Just as in trial, key exhibits should be vetted for potential evidentiary issues:
Is it a printed publication?
Is the date and content of the prior art authenticated?
Does the document contain hearsay without an applicable exception?
Attention to evidentiary issues at the outset will increase the likelihood that the PTAB will focus on the merits of your arguments rather than dismiss petitions on technicalities.
Dr. Erica Pascal, an IPT partner and based in San Francisco, focuses on patent litigation and strategic counseling in the life sciences area. Reach her at firstname.lastname@example.org.
Associate Michael L. Burns IV focuses on patent litigation and patent office trial procedures that review the patentability of issued patents. He is based in Philadelphia. Reach him at email@example.com.