When a Library Holding is not Meaningfully Indexed

by Dennis Crouch

Telefonaktiebolaget LM Ericsson v. TCL Corp. (Fed. Cir. 2019)

The PTAB sided with TCL — finding the challenged claims of Ericsson’s US Patent 6,029,052 unpatentable as obvious.  Only claim 18 is on appeal, which claims a method for filtering an inbound signal, including “band-pass filtering” (12); then amplifying the signal (34); then mixing (40) the signal with “inphase and quadrature oscillator signals” that were derived from a frequency-divided first oscillator signal (36) (resulting in two separate signals); then low-pass filtering both signals (42).

A key focus of the appeal is the question of whether the purported prior art – a German magazine article – was publicly available prior to Ericsson’s critical date (here 1-year before filing date of July 1, 1997).

The cover of the magazine lists a date of May/June 1996. However, Ericsson argued that the listed date on a magazine is not enough to prove that it was actually published by that time — especially here where a one-month delay discrepancy in publication would mean that the document was not prior art.  Ericsson found the article in the UCLA library — and provided evidence that it had not been received at UCLA until October 1996 — after the critical date.

TCL then provided a first letter from a German librarian who indicated that their library received access on June 19, 1996 (just before the critical date).  However, on challenge from Ericsson, the letter was withdrawn as inadmissible because the librarian refused to provide a sworn statement or to be deposed in the US.

Subsequently, TCL found Doris Michel — the “only individual TCL found who has personal knowledge of the record-keeping procedures used in 1996, was willing to sign a sworn declaration, and is willing to travel to the U.S. to be deposed.”  Michel indicated in a sworn statement that the article was “inventoried by the Library on June 18, 1996” and, if standard procedures were followed, would have been “accessible for use to the public after a processing time of 1-2 days.”

The PTAB allowed the Michel evidence and testimony and held that the article was publicly accessible (albeit in Germany) prior to the critical date.  And, as such was prior art.

Admissibility: On appeal, the patentee argued that the evidence should have been excluded by the PTAB because it was not timely.  In particular, PTAB rules require petitioner to provide sufficient evidence at the petition stage, not well into the trial phase. Under PTO Regs, supplemental information can only be submitted if it “reasonably could not have been obtained earlier.”  In this case, however, TCL did not even start looking for the librarian until after Ericsson filed its objections.

The motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.

37 C.F.R. 42.123.  In this case, the Federal Circuit affirmed the PTAB decision allowing the evidence — finding that the PTAB did not abuse its discretion in determining that “consideration of the supplemental information would be in the interests of justice” — especially because Ericsson was given sufficient opportunity to respond to the evidence and to provide any contrary evidence.

Note that the Federal Circuit did not directly address the requirement of showing that the evidence could not have been obtained earlier.

As to the merits, Ericsson argued that public shelving is insufficient to show public accessibility.  Although the article/magazine were apparently not meaningfully indexed, the magazine had been published for the past thirty years.  As such, “[t]his case is unlike cases in which a single dissertation or thesis was housed in a library.”

Note here, that the appellate panel again does not provide a full analysis of its reasoning here.  Since the article/magazine was not meaningfully indexed, what were the additional features to let the court know that it was sufficiently publicly accessible? What would have connected the dots here would be (1) some showing that the publication was well known to persons interested in the subject matter; (2) that the publication was known to be in the library in-question (perhaps proven by showing that the library had a subscription for several years); and (3) that the article in question is one that would be expected to find in the magazine.

Obviousness Affirmed.

Debbie McComas (Haynes & Boone) handled the appeal for Ericsson while Julie Goldemberg (Morgan, Lewis & Bockius) represented TCL.

47 thoughts on “When a Library Holding is not Meaningfully Indexed

    1. 6.1

      Just to whet your appetite, check out Claim 1 at stake in this appeal:

      A persona-extending-augmenting apparatus for at least a first human actor or a developer or a corporation comprising:

      A. at least a first computer… comprising a metaphor environment…

      whereby said metaphor environment… performs a function of restructuring or reconfiguring the computer in relation to said actor as said extended persona for said actor, that heretofore was egalitarian, same level or higher
      level in relation to said actor where said actor functioned in a machine-centric or close to machine-centric paradigm, whereby, unlike in traditional artificial intelligence, humans are brought into the equation with a practical advantage of said actor being given a headship who heretofore was merely a user so that said computer will thenceforth be intuitively operated, steered and developed in time as a body subservient, enslaved and in a oneness to said actor, inhibiting it from normally being developed as a self-thinking and self-propelling sociopath or unsafe system, while permitting
      safe incorporation within said extended-persona, a range of other means,
      some of which heretofore were self-thinking and self-propelling…

      That is some next level wackiness, there. And to think that the CAFC did not consider the disclosure enabling for these claims…*

      * Kudos the CAFC for deciding this case on §112 and not touching the §101 rejection. As it should be.

      1. 6.1.1

        Whoops, it appears that I neglected to close my blockquote at the end of “and self-propelling… .” Suffice it to say, everything after that is my own remark and not a quote from the rejected claims.


          Funny how much is sounds like you Malcolm with your “machine is a proxy for human thinking” line.


            True of most software patent applications, Bildo, for a very simple reason.

            Gobda-mn but you’re a f——n id-jit.

      2. 6.1.3

        Haha. Someone had some money to burn to appeal this all the way to the Federal Circuit. Good that the Federal Circuit didn’t waste more than six pages on this.


          “Why do you h@-te persona extending technology? You’re just jealous.”

          /reactionary defense of every cr-ap patent

      3. 6.1.4

        The application title here is delicious: “Necktie-Imitating Persona Extender/Environment-Integrator and Method for Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg or Wedded Avatar of Christ with eThrone for Global Governance.” I have no idea what that means, but it is a delight for the eye simply to peruse across it.

      4. 6.1.6

        There are weirder ones out there if you know where to look. Most of the applicants have neither the wherewithal nor the funding to appeal to the CAFC, though.

  1. 5

    There is EPO case law (T 834/09) that basically says indexing, cataloguing, putting on the shelf etc. etc. is irrelevant because the librarian themself is a member of the public, not bound by any confidentiality agreements. So books and magazines are publicly accessible as soon as they reach the hands of the librarian.

    link to epo.org

    1. 5.1

      Good post. In Europe, one member of “the public” is enough.

      When you present your document to a librarian who is free in law and equity to make your document available to members of the public, you put the disclosure content of your document into the prior art, because the librarian is a member of the “public” and you have “made available” your disclosure to that particular member of the public, and one member is enough.

      But what if the library is not a public library? Suppose it is instead the library of a corporation. Then, the librarian is perhaps not free to run off and tell the public about the content of the document. But is the corporation as such itself a member of “the public” to whom you have “made available” your disclosure?

      Wouldn’t help Ericsson, of course, because the evidence proved that the library was a public access library.

      1. 5.1.1

        Meh, A Sovereign’s choice is of course up to that Sovereign.

        But let’s not forget (or misconstrue) just any member “of the public” with the function of the artificial construct and legal notion of Person Having Ordinary Skill In The Art.

        Yet again (and certainly, for the US Sovereign), there are very specific “strings” to the notion here that distinguishes US practice from European practice.

        Which aligns better with the artificial construct and legal notion of PHOSITA? Well, one has to remember that PHOSITA is not meant to be taken as any single one REAL person (librarian or otherwise).

  2. 4

    Where the hell is the line? One of my old profs once remarked that if a lone Masters thesis is shelved in a Czech library, an inventor might be out of luck. I haven’t read the cases — from what Dennis writes, that particular practice pointer now seems wrong, or perhaps I wasn’t paying close attention that day.

    The question of how to adroitly draw a line in the sand here bothers me. Looks like no way out of the bottom-up, case by case “fact driven” slog.

    Does an expired provisional app published on my vanity website not pass muster because SEO bores me and I’m relegated to page 33 of search results?

    1. 4.1

      Perhaps on the subject of a book, un-indexed, reposing somewhere on a shelf in a giant library, I should mention what a wise old patent judge in England once wrote, long before the arrival of Mr Bezos, namely, that if you want to hide a particular leaf, so that nobody finds it, the best place is in amongst a lot of other leaves, for example on a branch of a tree in the Amazon rain forest.

      And by the way, the drafters of the EPO had this issue well in mind back in 1973 when they came up with their definition of “the state of the art” which the law deems to be part of the knowledge of the notional “skilled person”.

      1. 4.1.1

        EPC Article 54(2) informs us that:

        “The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.”

        So, the question whether a printed document, reposing on a library shelf, is part of the ” prior art” depends on whether it has been “made available” to “the public”.

        It used to be an interesting question, when the EPC was new, back in 1973. With the internet however, new aspects of the notion of “making available” are emerging.


            Indeed. But nevertheless, in the particular context of an unindexed book on a library shelf (or an unindexed leaf in a jungle of trees) it is I think helpful to the debate to think about the question “Well, had that book (or that leaf) already been made available to the notional PHOSITA, or had it not”.

    2. 4.2

      The broad case law definition of 102 [thus also 103] prior printed [and not just old fashioned print] publications is actually pretty clear as compared to some other areas of patent law, and has nothing to do with internal PTO searching limitations.
      But you raise an interesting if highly unlikely hypothetical of something no POSITA would arguably ever even think to look for – an abandoned [while still secret] provisional application [on which no regular application was ever based and published] published [illegally?] only on an obscure personal website.

      1. 4.2.1

        I do not think that the legality/illegality of the publication is pertinent to the legal question of whether or not the item is considered to be published for prior art status.

        As to “it’s on the web,” I suppose that may be considered analogous to an item merely being in a library, but not “properly” indexed so as to be searchable/“findable” by a PHOSITA.

        I am pretty sure that even the expansion under the AIA did not go so far as to provide “prior art” status for mere existence**.

        ** notwithstanding some of my jests made about the expansion of “prior art” with the AIA changes, concerning my “renting” library space on my own private island nation, with “translation” to my own private island nation’s native language.

  3. 3

    Do libraries normally index individual articles that are within published magazines? Presumably not. And the magazine shelving date is being used here to show a prior publication date, not needing proof of public accessibility by library indexing for a widespread distribution printed publication on electronics to be prior art for an electronics invention.

    1. 3.1

      As noted in the decision, even the patent owner’s argument admits that a publication less than a full year prior to its filing date would still be prior art unless antedated. That is, requiring proof of a prior invention date “swearing behind” the publication date. That is much harder to do successfully in an IPR than under pre-AIA Rule 131 ex parte practice, since declaration witnesses can be cross examined, and 102(g) and its case law gets enforced by APJs. So, unless the patent owner had really solid prior invention date evidence for such a long time period this appeal may have been pointless anyway.

      1. 3.1.1

        Curious if IPR petitioners or defendants have argued that the publication month printed on the magazine is prima facie evidence of its publication during that month which is sufficient unless and until after the patent owner presents some rebuttal evidence [as here]?


          That issue came up in a case not too long ago, as I recall. Regrettably, I cannot remember the case name, but I recall that the tribunal (cannot remember if it was PTAB or Art. III) concluded that the date on the magazine face page is prima facie evidence of publication date unless and until the patentee challenges it (with evidence).


          Excellent question – I do not recall the answer, or if their were important constraints to that answer.

          Given that “home publishing” is relatively easy, there may be issues with date-stamping being accepted as prima facie status (how would one go about — without subpoena power — proving otherwise?)

          Hmmm, I think that I have a new service to add to my private island nation library system….

  4. 2

    This is ridiculous. How could it be obvious if a person of ordinary skill would not possibly have known about it?

    Yes, if the publication anticipated the claimed invention, the patent is invalid.

    But it could not be more non-obvious.

    Our patent case laws are nonsense.

    It is time for an innovation commission to come up with a new patent system, this one is useless.

    1. 2.1

      The person who wrote the article — before the application was filed — knew pretty much everything about the alleged invention.

      So nothing ridiculous about denying the patent.

      1. 2.1.1

        That is a good point. If the the German publication covered the essential principles of the invention, then the additional limitations may have been obvious to the author and some of the early readers of the publication.

      2. 2.1.2

        A singular real person (e.g., the author) has nothing to do with establishing the Legal term of PHOSITA.

        Malcolm, you should know better.


          That’s nice. I was addressing the assertion that it was “ridiculous” to deny someone a 20 year monopoly when the facts show that someone else had come up with the idea first.

          Bottom line: not “ridiculous.”


            Bottom line (correction):

            MAY be ridiculous.

            It is not “cut and dried” either way (you over-corrected to the negative).


              Well, yes if a first invention was suppressed and concealed and never used commercially a later independent inventor could get a patent, even under the AIA, But of course publishing it in a technical magazine is the antithesis of suppression and concealment.


                … or maybe not –

                My Island Nation Library now has a plethora of technical magazine publication options that “publish” and yet safely avoid falling into that hands of anyone that may actually want to know about it (of course, for “legal” reasons, this service does not claim to “suppress or conceal”)…

                1. Oh yes, the INL, next to the Grand Hall., near the middle of the theoretic intersection of A and B (or so it is written). I wonder: How do you find the secret material that you “-lish”? There are no “pubs” there (by definition), and you can’t go dig it up it yourself since its not available to find. But if I bring my NDA and information to you, or we have the privilege of confidence, and I believe that you actually might have stuff that I can’t examine, why why why I cry, would I tell you my secret just so you could keep my secret for me? Or is your INL really just an archive or back -up service?

                2. Peeps inquires:

                  I wonder: How do you find the secret material that you “-lish”? There are no “pubs” there (by definition), and you can’t go dig it up it yourself since its not available to find.

                  Cannot give away State Secrets, now can I?

                  But if I bring my NDA and information to you, or we have the privilege of confidence,

                  Nope – those things are not entertained with your engagement with my Island Nation Library. Why would you jump to such assumptions? You are dealing with a Sovereign here.

                  The “deal” is more open (AND more clandestine) than you appear to be able to grasp. Think more deviously Peeps (think like “highest bidder gets to BOTH save their secrets and use those secrets to wreck anyone else trying to play the patent game — sort of an ultimate Efficient Infringer’s atomic weapon).


          There should be a very specific construction step in every patent case- just like there is for the words in the claims- to construct the PHOSITA, which automatically construes what the novel subject matter of the claim is. IOW, which art(s) are we really talking about?


            The filtering arts.

            Filters. How do they work?

            Stuff goes in. Then there’s some separation.

            It’s a real trip, man.

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