A recent final written decision demonstrates the possible benefit to objecting to evidence that could be disputed, even if that evidence is not inadmissible under the Federal Rules of Evidence. In Gillette Co. v. Zond, LLC, the Board invalidated the claims-at-issue as obvious over a combination of references that includes a Russian dissertation catalogued in a Moscow library. In a somewhat rare occurrence for the Board, one of the Administrative Patent Judges wrote a dissent to the majority opinion.

The patent-at-issue—U.S. Pat. No. 6,896,773 (“the ‘773 patent”)—relates to a method and apparatus for depositing films on semiconductor substrates. The petitioner brought an inter partes review challenging several claims as obvious over a combination of the Russian dissertation, “Mozgrin,” and additional references.

The parties disagreed as to whether Mozgrin was available as prior art under 35 U.S.C. § 102(b). Mozgrin is a Russian-language dissertation a student authored at the Moscow Engineering Physics Institute and was catalogued by the Russian State Library. The catalog entry for Mozgrin does not provide the precise date at which the publication became available to the public—it merely states “Imprint Moscow 1994”—but the Board held that this was sufficient to indicate that Mozgrin was publicly available well before the November 2002 critical date of the ‘773 patent.

In analyzing whether Mozgrin constitutes available prior art, the Board noted that the patent owner failed to file a motion to exclude the publication. The Board stated:

[Patent Owner] had the opportunity, during this trial, to object to evidence and file a motion to exclude the evidence submitted by [Petitioner]. [Patent Owner], however, did not object under 37 C.F.R. § 42.64(b) to the admissibility of the catalog entry or the Mozgrin Thesis. Notably, [Patent Owner] does not challenge the authenticity of these documents, nor allege that they constitute inadmissible hearsay. Therefore, the information set forth in the catalog entry can be relied upon by Gillette as evidence supporting its contention that the Mozgrin Thesis was sufficiently accessible to the public before the critical date and it is a printed publication within the meaning of § 102.

The majority’s opinion is interesting, as the grounds on which the patent owner should have objected are unclear. As noted by the dissenting Administrative Patent Judge:

Furthermore, I respectfully disagree [Patent Owner] was required to object under 37 C.F.R. § 42.64(b). Significantly, [Patent Owner] does not contend that the Mozgrin Thesis is inadmissible under any Federal Rule of Evidence. Instead, [Patent Owner] argues that the Mozgrin Thesis is not prior art under 35 U.S.C. § 102(b) because [Petitioner] has not shown the Mozgrin Thesis was publicly accessible – a challenge to the sufficiency or weight to be given to the Mozgrin Thesis. Such argument is not proper in a motion to exclude, which is a challenge to the admissibility of evidence, not a challenge to sufficiency.

Regardless of whether a motion to exclude would be strictly proper under the Federal Rules of Evidence, four out of the five judges on this panel considered the patent owner’s failure to object to be persuasive evidence. Accordingly, patent owners that dispute whether prior art satisfies the substantive requirements of § 102(b) should at least consider objecting to the admissibility of the prior art and file a motion to exclude.