Takeaway: To qualify as a printed publication, a document must be generally available and “sufficiently accessible to the public interested in the art” before the critical date.

In its Final Written Decision, the Board found that Petitioner had not shown by a preponderance of the evidence that the challenged claims, claims 1-8, 10-12, 14-20, and 22-24, of the ’178 Patent are unpatentable. The ’178 Patent relates to a massager with an inductively chargeable power source. 
The Board first addressed Patent Owner’s Motion to Exclude the Lily reference and associated exhibits. Petitioner contends that Patent Owner first challenged the publication date of Lily in its Patent Owner Response, however, Petitioner is conflating Patent Owner’s challenge to the publication date and its challenge to the admissibility of Lily. Therefore, Petitioner did not comply with the Rules when it waited to submit the evidence to support admissibility with its Reply instead of the deadline to submit them as supplemental evidence within ten business days of Patent Owner’s challenge to the admissibility of Lily. Therefore, the Board will not consider the associated exhibits as supplemental evidence.

Turning then to the admissibility of the exhibits, the Board found that the associated exhibits are inadmissible. First, the Board found that these exhibits, which are printouts of webpages, were not properly authenticated under Federal Rules of Evidence 901 and 902. The Board found that the Petitioner was required to authenticate the information on the website itself, not merely the printout by producing an affidavit from someone with knowledge of the website, such as the web master or someone else with personal knowledge. Petitioner has not done so. Specifically regarding the exhibits that are from the Wayback Machine, Petitioner could have provided testimony regarding how the Wayback Machine works and how reliable its contents are, or a witness having personal knowledge that the printouts are authentic. Petitioner did neither. Regarding Exhibit 1023, a screenshot showing a PDF copy of Lily as it was found online and its automatically computer generated properties, the Board found that Exhibit 1023 was inadmissible because Petitioner did not provide any testimony of any witness with personal knowledge of the information on the websites or the associated printouts at issue.

The Board then addressed whether the associated exhibits are hearsay. Regarding Exhibit 1013, printouts that tell the story of LELO’s 10-year history, the Board found that Petitioner had not provided evidence to establish that the admissions should be attributed to Patent Owner as an admission. Therefore, they are hearsay. Regarding Exhibits 1014-1022, Petitioner stated the dates in the exhibits are not hearsay because they are not being offered for the truth of the matter asserted. However, the Board found otherwise and found that the dates are inadmissible hearsay. The Board also found that Exhibit 1023 are hearsay.

Next, the Board addressed the admissibility of the Lily reference. Patent Owner contends that page 1 of the exhibit that provides a date of 2005-06 has not been properly authenticated under FRE 901 and is not self-authenticating under FRE 902. Petitioner stated that it is authenticated by circumstantial evidence such as the consistent look and feel of Patent Owner’s branding on its website. However, the Board found that while the page referenced a website, it does not show the website from which it was downloaded. Petitioner also argued that authenticating information is not necessary because the Lily massager is Patent Owner’s product, but the Board found this unpersuasive because the page is attributable to Leloi AB, not Patent Owner. Therefore, the Board found that the exhibit was not authenticated and is inadmissible. Patent Owner also contended that the copyright dates are hearsay. Petitioner argued that the dates are not offered for the truth of the matter asserted in that it does not matter if the copyright was registered, and that they are a party admission. Both of these arguments were dismissed by the Board for the same reasons as above.

The Board then turned to whether Lily is a printed publication. An inter partes review cannot be based upon a public use or sale, and must be based upon prior art in the form of a patent or printed publication. To qualify as a printed publication, a document must be generally available and “sufficiently accessible to the public interested in the art” before the critical date. In this case, the critical date is February 1, 2005. The Board found that because it determined that Lily is inadmissible, then it is not a printed publication, and because both asserted grounds of unpatentability rely in part upon the assertion that Lily is prior art, Petitioner has not demonstrated by a preponderance of the evidence that the challenged claims are unpatentable. The Board then went on to state that even if all the evidence was considered, the outcome would not change because Lily was not created until at least 2013, well after the critical date, and does not describe sufficiently the Lily device. Further, registration of a copyright, without more, does not demonstrate sufficient accessibility to establish that the reference is a printed publication.

Standard Innovation Corp. v. Lelo, Inc., IPR2014-00148
Paper 41: Final Written Decision
Dated: April 23, 2015
Patent 7,749,178 B2
Before: Philip J. Kauffman, Jacqueline Wright Bonilla, and Christopher L. Crumbley
Written by: Kauffman