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Telefonaktiebolaget LM Ericsson v. TCL Corp.

Declaration Submitted During IPR Trial Sufficient to Establish Public Accessibility

Telefonaktiebolaget LM Ericsson v. TCL Corp., __ F.3d __, 2019 WL ____ (Fed. Cir. Nov. 7, 2019) (NEWMAN, Lourie, Clevenger) (PTAB) (2 of 5 stars)

Fed Cir affirms IPR decisions that Ericsson’s claims are unpatentable as obvious. Ericsson’s patent relates to a wireless “direct conversion receiver” that can receive signals at different frequency bands. The Board correctly determined that a certain foreign publication is available prior art. The Board did not abuse its discretion in admitting, during the trial, a librarian declaration concerning public availability, based in part on TCL’s difficulty in finding a witness with personal knowledge, and notwithstanding Ericsson’s objection that the declaration should have been included with the petition. “[W]hen the challenged evidence is reasonably viewed as material, and the opponent has adequate opportunity to produce contrary evidence, the interest of justice weighs on the side of admitting the evidence.” Op. at 8. The record, which described the reference being housed in a publicly accessible library, was sufficient to support the Board’s determination that the reference was publicly available, and the opinion notes that Ericsson did not tender evidence to counter TCL’s submission. Bayer, 568 F.2d 1357 (CCPA 1978), and Cronyn, 890 F.2d 1158 (Fed. Cir. 1989), are not contrary because those described only a “single dissertation or thesis,” unindexed, rather than an entire run of a published journal.

The opinion reviews the reference; the record was sufficient to support the obviousness determination. The opinion rejects, without legal citation, Ericsson’s arguments of non-enablement, no motivation to combine, and teaching away.

KEYWORDS: INTER PARTES REVIEW; PUBLIC ACCESSIBILITY; OBVIOUSNESS (YES)