Talk of laziness, copyright, and hearsay peppered oral arguments last week in Intellectual Ventures I LLC v. Ericsson Inc., No. 2015-1947 (Fed. Cir., filed Aug. 26, 2015). This appeal from an inter partes review (IPR) seeks to overturn the Patent Trial and Appeal Board’s decision canceling Intellectual Ventures’ claimed methods for secure packet switching. The Board primarily relied on a reference by Stadler, which is a document alleged to be published by the Institute of Electrical and Electronics Engineers (IEEE) that bears a copyright notice date of 1998. IEEE publishes some of its documents, and the Board relied on the copyright notice date as the publication date for Stadler.

Hearsay in the Hot Seat

Intellectual Ventures contends the copyright notice is not sufficient to show public accessibility and that the date within the copyright notice constitutes “inadmissible hearsay not within any exception [to the hearsay rule] when used to prove when Stadler was made publicly available.” (Appellant’s Reply Brief at 15.) Ericsson contends that the Board properly relied on the copyright notice date because Stadler fits within the market-report hearsay exception in Federal Rule of Evidence (FRE) 803(17), which applies to “[m]arket quotations, lists, directories, or other compilations that are generally relied on by the public or by persons in particular occupations.” (Appellee’s Brief at 30-31.) Ericsson also contends that Stadler fits within the “residual exception” of FRE 807, which allows the admission of hearsay if it meets several requirements, including showing that “it is more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts.” (Appellee’s Brief at 34.) Intellectual Ventures argues that these exceptions do not apply because “Stadler (and its copyright) was not a compilation under [the market-report exception of] FRE 803(17),” and “that the requisite levels of probativeness and necessity are not present here” to qualify under the residual exception. (Appellant’s Reply Brief at 16, 19.)

During last week’s oral hearing, the bulk of the panel’s questions, and in particular Judge O’Malley’s, were directed to this hearsay issue.

Intellectual Ventures’ Counsel: Laziness Shouldn’t Pay – Ericsson Should Have Dug Deeper

Although Intellectual Ventures opened with obviousness arguments, Judge O’Malley soon directed counsel to the hearsay issue as the “more straightforward” make-or-break issue. Intellectual Ventures’ counsel argued that “the law should not reward laziness,” suggesting that Ericsson should have done more to prove Stadler’s publication date, such as obtaining a declaration from IEEE regarding its standard copyright practices in 1998.

Judge O’Malley suggested that IEEE and its audience are “pretty well known.” But, Intellectual Ventures’ counsel rejoined, IEEE’s copyright practices are not so well known, and the date could represent receipt not publication. He then reiterated that Stadler fell outside the hearsay exceptions. Judge O’Malley responded that “the market report is your better argument,” giving Intellectual Ventures the opportunity to expand on its contentions regarding inapplicability of the residual exception.

Reliability as a Keystone to Hearsay Exceptions

Ericsson’s counsel focused on IEEE as a trustworthy, reputable third party. He further asserted that IEEE conference dates corresponding to the copyright date in Stadler corroborated the copyright notice’s date. Judge O’Malley asked if getting an IEEE declaration regarding the copyright date would have been difficult, inviting a reflection on the reluctance of non-parties to get involved in litigation. Judge O’Malley then stated that Ericsson’s “best argument has to do with the residual exception.” To bolster Ericsson’s case, its counsel noted that the Board has leeway to make evidentiary determinations regarding hearsay exceptions and that, in any event, Stadler fits within the market-report exception as a compilation.

Appellate Panel May Be Mulling Over Hearsay

A large percentage of PTAB trials receive summary affirmances under Rule 36 within a day or two of oral argument. As of this writing, the court has not affirmed, suggesting that it may be drafting an opinion that will further clarify whether and under what circumstances a copyright notice may be used to prove the publication date of a reference.