Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in Telefonaktiebolaget LM Ericsson v. TCL Corporation, 2017-2381, 2017-2385 (November 7, 2019). Telefonaktibolag LM Ericsson (“Ericsson”) appealed from the Patent Trial and Appeal Board’s (PTAB) inter partes review (IPR) finding that four claims of its patent were invalid as obvious over prior art. The Federal Circuit affirmed.
The primary question on appeal was whether the principal reference relied on by the PTAB, an article entitled “Multimodale Funktelefone” (translation: Multimodal Wireless Telephones) was publicly available more than one year before the patent’s filing date. The patent’s filing date was July 1, 1997 and the German periodical was dated May/June 1996. Ericsson objected that the date on the periodical’s cover was not sufficient as a matter of law to establish public accessibility. In response, the IPR petitioner submitted a declaration by a German librarian stating that the periodical had been kept in the library’s collection for over thirty years, and the May/June 1996 issue had been received and inventoried by the library on June 18, 1996, and was “openly accessible for use to the public after a processing time of 1-2 days.” The PTAB admitted the article and found the claims obvious over it in combination with other prior art references.
On appeal, the Federal Circuit held that the PTAB did not abuse its discretion in admitting the librarian’s declaration because it was material and Ericsson had adequate opportunity to respond to it and to produce contrary evidence. The Court noted that Ericsson had provided no evidence to counter the librarian’s declaration, the publication date on the face of the periodical, or the German library’s records showing that the periodical was received and shelved. In view of the evidence that the periodical had been published for more than thirty years and that the library was accessible to the public, the Court concluded the article had been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.”
The Court also rejected Ericsson’s assertion that the article taught away from the patented invention, explaining that the article’s discussion of “disadvantages” of a specific component of the claimed invention did not suggest that the component would be ineffective.