Evidence Excluded For Insufficient Evidence To Support A finding That It Is What The Proponent Claims It Is IPR2014-01347


Takeaway: Failure to produce evidence to support a finding that an item is what the proponent claims it is under Federal Rules of Evidence 901(a), will result in the exclusion of the item.

In its Final Written Decision, the Board excluded Goldbeck (Exhibit 1005), which mooted or disposed of all issues in the inter partes review (IPR). The Dissent concluded that Goldbeck is admissible.

Patent Owner objected to the admissibility of Goldbeck. The Board excluded Goldbeck based on the Federal Rules of Evidence (FRE) 901 (authentication), Rules 801 and 802 (hearsay), and Rules 401 and 402 (relevance). Regarding authentication, Rule 901(a) states that “[t]o satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.”

The only identifying information provided by Petitioner was a footnote in its Petition, which alleged publication of Goldbeck during October 5-8, 1999. Petitioner did not cite or otherwise provide evidence for this claim. Patent Owner asserted that Goldbeck does not reference such a publication date. In response, Petitioner asserted that the reference is self-authenticating because it is an article from an IEEE periodical, and it has a copyright date and an ISBN.

The Board stated that although the copyright notice is probative that IEEE owns a copyright to the article, it is not probative that the article was ever published by IEEE or anyone else. As for the ISBN, the Board stated that Petitioner does not produce evidence showing that the alleged ISBN is in fact an ISBN, or “what an ISBN is, what an ISBN signifies, how an ISBN is assigned, who assigns it, or when and under what circumstances an ISBN is stamped onto something.”

In addressing the Dissent’s case law in support of admitting Goldbeck, the Board stated that it also does not support the self-authentication argument. Therefore, the Board granted Patent Owner’s Motion to Exclude.

The Dissent stated that Patent Owner is challenging the sufficiency of the evidence that Petitioner has proffered to establish that Goldbeck is a prior art publication. The dissent states that such challenges are not made in a motion to exclude. Second, the Dissent states that because Patent Owner is the movant, it bears the burden of showing that Goldbeck is inadmissible. According to the Dissent, Patent Owner failed to sufficiently identify where in the record Goldbeck was relied upon by Petitioner. The Dissent stated that Petitioner’s representations and expert testimony are evidence that Goldbeck was published in 1999. The Dissent concludes that Goldbeck is admissible under FRE hearsay rules as well.

Paper 25: Final Written Decision
Dated: January 6, 2015
Patent 8,508,593
Before: James P. Calve, Michael J. Fitzpatrick, and Barry L. Grossman
Written by: Fitzpatrick
Dissent by: Calve