The Patent Trial and Appeal Board (PTAB), following institution of inter partes review (IPR) of six claims of the patent owner’s patent, cancelled all of the challenged claims as anticipated. At oral argument, the PTAB excluded several patent owner exhibits based on lack of authentication, hearsay, and improper reply evidence. The patent owner appealed the PTAB findings of anticipation and its evidentiary rulings.
The Federal Circuit affirmed the PTAB’s anticipation finding as to four claims, but reversed the PTAB and remanded as to two claims, on the grounds that the PTAB had improperly excluded as hearsay, a patent owner exhibit that showed the inventor proved conception of the invention prior to the filing date of the prior art relied upon by the petitioner. The court rejected the PTAB’s finding that the exhibit, an email communication involving the patent owner, was hearsay because it included out-of-court statements from a third party. Instead, and relying on Knorr v. Pearson, 671 F.2d 1368 (C.C.P.A. 1982), the Federal Circuit found that “[t]he act of writing and sending the email is, by itself, probative evidence” should have been considered by the PTAB. The court further held that the exhibit was “legally significant” because it “communicated the conception” of the invention to a third party prior to the filing date of the cited prior art, and remanded for a determination of diligence and reduction to practice.