Too often some challenger in IPR declines to use non-patent literature (or “NPL”), such as academic and trade journal articles, because of the effort and risk associated with establishing that the NPL is prior art. The Federal Circuit’s recent decision in Telefonaktiebolaget LM Ericsson V. TCL Corp. (No. 17-2381) illustrates why that strategy can be a mistake and provides guidance on how to use NPL effectively.
As we have discussed, the PTAB often imposes specific requirements for establishing that an NPL reference is a prior art printed publication. Unlike with patent prior art, where challengers can ordinarily rely on the dates on the document itself, challengers typically have to introduce evidence that NPL was publicly accessible early enough to make it prior art. Getting that evidence can be challenging, which is why some challengers shy away from using NPL at all.
Telefonaktiebolaget LM Ericsson v. TCL Corp. shows why overlooking NPL can be a mistake. There, the patent challenger relied in part on a German journal article as prior art. The Board found that the challenged claim was obvious in view of the article, and the Federal Circuit affirmed. This article, which some challengers might have overlooked, ended up killing the challenged claim.
A key issue in the case was whether the challenger provided sufficient evidence that that German journal article was publicly accessible. The challenger relied on a declaration from a German librarian who explained her library had been receiving the periodical that published the article since 1963 and that a copy of the issue in which the article appeared had been available to the public since before the date necessary to make the article prior art.
The librarian explained that her understanding was based on her personal knowledge of the library’s registration practices and records, rather than any personal memory of the actual article. On that record, the Federal Circuit affirmed the Board’s conclusion that the German journal article was prior art.
- Establishing that NPL is prior art can require significant effort. But this case illustrates that making that effort can be worthwhile. Challengers should begin gathering evidence well before filing an IPR petition.
- This case illustrates that a challenger’s efforts should not stop when the petition is filed. Here, the Board permitted a challenger to submit the librarian declaration after institution. While the Board may not permit such a declaration in other cases, the Federal Circuit held that the Board did not abuse its discretion here because the patent owner had the opportunity to depose the librarian and to respond to the substance of the reference with contrary evidence.
- The case provides a roadmap for using a librarian declaration to admit NPL. Here, where the librarian had personal knowledge of the library’s procedures at the time the NPL was received, it was sufficient to provide testimony based on a library’s records and procedures about when a journal article was received and made available to the public. Factual differences, such as if the librarian did not have personal knowledge of the library’s procedures from the relevant time period, could require different evidence.
- The Federal Circuit was careful to distinguish this case from those where a library was the only source of a reference, as might be the case, for example, with a student thesis. Here, the question concerned the public accessibility of an established periodical journal. The library’s mere receipt of the journal was relevant, as was the library’s practice of making it available to the public.