Toyota Motor Corporation v. American Vehicular Sciences LLC
In a final written decision, the U. S. Patent and Trademark Office Patent (PTO) Trial and Appeal Board (PTAB or Board) granted in part the patent owner’s motion to exclude certain documents purporting to corroborate the publication date of the prior art. Notwithstanding this exclusion, however, the Board admitted testimony from a librarian regarding the publication of the prior art and found the patent at issue invalid. Toyota Motor Corporation v. American Vehicular Sciences LLC, PTAB-IPR2013-00417 (PTAB, Jan, 2015) (Anderson, APJ)
Toyota filed a petition requesting an inter partes review (IPR) of claims of a patent belonging to American Vehicular Sciences (AVS). After institution of the IPR, AVS voluntarily cancelled all but one of the claims at issue.
As to the remaining claim, AVS contested that Toyota’s prior art was published before the effective filing date of the challenged patent, June 7, 1995, but conceded that if the reference was found to be prior art, it anticipated the patent claim. Consequently, the only issue before the Board was whether the reference submitted by Toyota was published before the effective filing date and therefore prior art within the meaning of 35 U.S.C. § 102(a).
The reference was a technical article bearing a 1995 copyright date, but lacking a publication date. It was Toyota’s burden to establish that the article had been published before June 7, 1995. Toyota submitted evidence including webpages and an award received by the author for the article, all purporting to establish that the article had been published in January of 1995. In addition, Toyota submitted affidavits, one from the author of the article and the other from a library and archive assistant with the publisher of the article, both attesting that the article at issue had been published in January of 1995.
AVS moved to exclude all Toyota’s corroborating evidence, including testimony, on the basis that it was all hearsay not subject to any exception under Federal Rule of Evidence 803. Toyota opposed, arguing that the webpages were business records subject to the hearsay exception. The Board disagreed and that evidence was excluded. With respect to the award made to the author of the article, Toyota argued that it was only being offered to refresh the author’s recollection as to when the article was published. The Board disagreed and excluded the award as hearsay as well on the grounds that it was an out of court statement being offered to prove the truth of the publication date. As for the two affidavits, the Board denied AVS’ motion to exclude and admitted both.
Minimal weight was given to the author’s testimony since nearly 20 years had passed since he had written the article and he did not provide any explanation of why he would have any personnel knowledge of its publication date or that he had any involvement with its publication. On the other hand, considerable weight was given to the librarian’s testimony. The Board found that her testimony established by a preponderance of the evidence that the article had been published in January of 1995. “What matters is the statement of [the librarian], in her official capacity relating to archived information of [the publisher], that [the article] was made available [to] the public in January of 1995.”
Practice Note: Notably, AVS elected not to cross-examine the librarian, and therefore, the credibility of her testimony was not challenged. Had AVS done so, it is likely that the Board would still have admitted her testimony into evidence. However, it is impossible to speculate as to whether an effective cross-examination could have damaged her direct (affidavit) testimony to the point where Toyota could not carry its burden of proof.