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 However, on challenge from Ericsson, the letter was withdrawn as inadmissible because the librarian refused to provide a sworn statement or to be deposed in the US.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.
Debbie McComas (Haynes & Boone) handled the appeal for Ericsson while Julie Goldemberg (Morgan, Lewis & Bockius) represented TCL.