United States: Raiders Of The Lost Art

In Telefonaktiebolaget LM Ericsson ("Ericsson") v TCL Corporation,  ( "TCL"), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019), the Federal Circuit affirmed the PTAB's decision that canceled claims in an Ericsson patent that TCL challenged based on its subsidiary finding that a German journal article TCL presented was indeed prior art.  The decision is important because it offers guidance in assessing what type of evidence may be persuasive in a PTAB's assessment of the public accessibility of a journal article whose publication date is close to the challenged patent's critical date.

TCL filed two IPR petitions against Ericsson's U.S. Patent No. 6,029,052 ("patent") filed July 1, 1997. The patent is directed to receiving and processing wireless signals from communication systems operating over multiple frequency bands without requiring significant hardware duplication.  TCL challenged claims 13, 15, 16, and 18 of the patent as unpatentable over a journal article titled, "Multimodale Funktelefone" (translation: Multimodal Wireless Telephones), and published in the May/June 1996 issue of a German technical journal, "Ingenieur der Kommunikationstechnik" (translation: Engineer of Communications Technology).

The PTAB granted both petitions and consolidated the two proceedings.  During the consolidated proceeding, Ericsson argued that this journal article was not made publicly available until less than a year before the July 1, 1997, filing date of the patent and, as a result, could be antedated by Ericsson's invention date.  TCL replied asserting that the journal article was publicly accessible in several university libraries in Germany as of June 1996, more than one year before the patent's filing date (i.e., before the patent's critical date).  In support, TCL submitted a declaration from a librarian at the Library of the Technische Universität Darmstadt in Germany.  The declarant stated she worked at the Library in 1996 and had personal knowledge of library shelving records during this time, namely, records showing that the journal was catalogued and shelved with the call number "Tech Z Fe 57," and the index card recording the Library's accession of the journal and showing the Library's entry of the journal using the same call number.  The declarant also provided copies of the index card.  The declarant concluded that the journal was "inventoried by the Library on June 18, 1996 [and] was openly accessible for use to the public after a processing time of 1-2 days."  Slip Op. at 9. TCL supplied the declaration not with its petitions but during the consolidated proceeding. Ericsson objected to the belated presentation of the declaration, but the PTAB exercised its discretion to accept the declaration given Ericsson had ample opportunity address the merits of the declaration.

And based on the merits of the declaration, the PTAB agreed with TCL that the article was publicly accessible before the Ericsson patent's critical date.  The PTAB looked to Blue Calypso, LLC v. Groupon, Inc., 815, F.3d 1331,1348 (Fed. Cir. 2016), where the Federal Circuit confirmed that a publication is publicly available when "persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it ... .".  Applying this standard, the PTAB found that because the journal article in question "was housed in a library accessible to the public [and] published in a periodical that had been published for more than thirty years ... ," persons interested and ordinarily skilled in the subject matter exercising reasonable diligence could have located the journal issue in May or June 1996.  2017-2381, 2017-2385, at *9.  In turn, the PTAB found that the journal article was publicly available as of May or June 1996, more than one year before the Ericsson patent's filing date.  As a consequence, the PTAB found the challenged claims unpatentable over the article.

Ericsson appealed to the Federal Circuit, arguing that "precedent requires something more than simply shelving the document in a library."  Id.  The Federal Circuit disagreed.  Indeed, the Federal Circuit distinguished this case from those cases in which a single thesis was determined not to be publicly available because that thesis, while housed in a library, was not catalogued or indexed in a meaningful way.  Ericsson also argued that the index card is the only evidence of public availability and this index card is insufficient support for the Board's finding that the article was publicly accessible in May or June 1996.  The Federal Circuit disagreed with this argument as well, noting that Ericsson failed to provide any evidence to counter the librarian's declaration or to challenge the Library's records showing receipt and shelving of the article.

The Federal Circuit thus affirmed the PTAB's decision that the German article was publicly available more than one year before the Ericsson patent's filing date, and, in turn, the challenged claims were unpatentable over that article.

Originally published by Marshall Gerstein, August 2020

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