Trials@uspto.gov
`571-272-7822
`
` Paper No. 60
` Entered: October 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEABERY NORTH AMERICA INC.,
`Petitioner,
`
`v.
`
`LINCOLN GLOBAL, INC.
`Patent Owner.
`____________
`
`Case IPR2016-00840
`Patent RE45,398
`____________
`
`
`Before THOMAS L. GIANNETTI, JENNIFER S. BISK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`571-272-7822
`
` Paper No. 60
` Entered: October 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEABERY NORTH AMERICA INC.,
`Petitioner,
`
`v.
`
`LINCOLN GLOBAL, INC.
`Patent Owner.
`____________
`
`Case IPR2016-00840
`Patent RE45,398
`____________
`
`
`Before THOMAS L. GIANNETTI, JENNIFER S. BISK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`Case IPR2016-00840
`Patent RE45,398
`
`
`
`
`I. INTRODUCTION
`Seabery North America Inc. (“Petitioner”) filed a Petition pursuant to
`35 U.S.C. §§ 311–19 to institute an inter partes review of claims all 195
`claims of U.S. Patent RE45,398 (Ex. 1001, “the ’398 patent”). Paper 5
`(“Petition” or “Pet.”). Lincoln Global, Inc. (“Patent Owner”) filed a
`preliminary response. Paper 9 (“Prelim. Resp.”). Applying the standard set
`forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable
`likelihood that Petitioner would prevail with respect to at least one
`challenged claim, we granted Petitioner’s request and instituted an inter
`partes review on 151 of the 195 claims. Paper 11, 32.
`Following institution, Patent Owner filed a Response to the Petition
`(Paper 33, “PO Resp.”) and Petitioner filed a Reply (Paper 42, “Pet. Reply).
`In addition, and with our authorization, Patent Owner filed two separate sur-
`replies directed to specific issues that came up during the trial. Papers 52
`and 53. These will be discussed in more detail infra.
`The extensive record in this case also includes transcripts of several
`telephonic hearings requested by the Board or the parties. See Ex. 1037
`(transcript of October 31, 2016 hearing); Ex. 1048 (transcript of November
`15, 2016 hearing); Ex. 1049 (transcript of January 9, 2017 hearing);
`Ex. 1053 (transcript of February 22, 2017 hearing); Ex. 2023 (transcript of
`May 16, 2017 hearing). In addition, a final oral hearing was held on July 10,
`2017. A transcript of that hearing has been entered in the record. Paper 59
`(“Hr’g Tr.”)
`For the reasons discussed below, Petitioner has shown by a
`preponderance of the evidence that all representative claims of the ’398
`patent are unpatentable. See infra. In addition, we determine that by
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`consent of the parties, the remaining claims in this inter partes review stand
`or fall with those representative claims. Therefore, the remaining claims are
`also unpatentable.
`
`II. PRELIMINARY MATTERS
`A. Representative Claims
`Because the trial involved over 150 claims, we ordered the parties to
`meet and confer “to discuss ways to streamline this proceeding,” including
`choosing no more than 20 representative claims for trial. Paper 12, 3. If the
`parties could not agree on representative claims, we authorized the parties to
`each submit a proposed list of such claims. Id. The parties eventually
`agreed on the following claims of the ’398 patent as representative: claims
`9, 12, 14, 23, 24, 33, 52, 81, 89–92, 95, 96, 137–141, and 168. Paper 25, 2.
`We then ordered the parties each to submit a memorandum “associating each
`of the . . . representative claims with one or more of the remaining claims of
`the ’398 patent for which trial was instituted.” Id. We clarified this
`directive by the following explanation:
`The Board intends that by ‘associating’ a particular claim
`with a representative claim, the party agrees that a decision as
`to the patentability of the representative claim [will] be binding
`also as to the associated claim.
`Id. at 3 n.1
`Accordingly, the parties each submitted a memorandum on
`representative claims, as required by our order. Paper 27 (Patent Owner’s
`memorandum); Paper 28 (Petitioner’s memorandum). While there was a
`considerable amount of overlap in the parties’ submissions, for the purpose
`of this Decision, we adopt Patent Owner’s presentation of representative
`claims and associated remaining claims. See infra. Furthermore, we
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`acknowledge Patent Owner’s representation that Patent Owner “currently
`believes each representative claim and its associated remaining claims stand
`or fall together.” Paper 27, 1. Patent Owner did not alter this representation
`in its Patent Owner Response. See generally PO Resp.
`
`
`B. Motion to Exclude
`The principal reference relied on by Petitioner against all challenged
`claims is a thesis authored by Dorin Aiteanu, a Ph.D. candidate at the
`University of Bremen, Germany. Petitioner contends that the thesis was
`publicly accessible in March 2006, several years before the March 2010
`filing date of the application for the ’398 patent. Petitioner relies mainly on
`the testimony of Dr. Axel Graeser, who was on the faculty of the University
`of Bremen and supervised Aiteanu’s thesis.
`Patent Owner’s motion does not seek to exclude the thesis itself.
`Instead, Patent Owner contests Petitioner’s proofs that the Aiteanu thesis
`qualifies as a printed publication under 35 U.S.C. § 102(b). See discussion
`infra. Thus, Patent Owner’s motion to exclude evidence (Paper 49)
`narrowly focuses on certain testimony about the thesis from Dr. Graeser, and
`on certain dates appearing on Exhibit 1003, one of the copies of the Aiteanu
`thesis submitted by Petitioner.1
`Although not entirely clear from Patent Owner’s motion, it appears
`Patent Owner objects to Dr. Graeser’s use in his testimony of the terms
`
`
`1 Petitioner has introduced three copies of the Aiteanu thesis: Exhibits 1003
`and 1019 (submitted with the Petition) and Exhibit 1050 (introduced during
`the trial). The minor differences between the copies are discussed infra.
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`“publish” or “published” in reference to the thesis, on the ground that it
`constitutes “unqualified expert testimony.” Paper 49, 1; Paper 56, 1. Thus,
`Patent Owner seeks to exclude certain statements from Dr. Graeser’s
`declaration that Patent Owner contends contains “publication date
`assertions” or alleged “legal conclusions” as to when the thesis was
`published. Paper 49, 1–2; Paper 56, 1–2. Petitioner responds that Dr.
`Graeser’s testimony “is factual, not an expert opinion.” Paper 55, 2.
`We deny Patent Owner’s motion to exclude this testimony. We do
`not understand Dr. Graeser’s testimony to be expressing an expert opinion
`on this issue. Thus, Rules 702 and 703 of the Federal Rules of Evidence,
`cited by Patent Owner, are inapplicable. Rather, we determine that Dr.
`Graeser has demonstrated personal knowledge of the matter and is therefore
`competent to present factual testimony on the public accessibility of the
`Aiteanu thesis under Rules 601 and 602 of the Federal Rules of Evidence.
`Likewise, we deny Patent Owner’s motion to exclude certain dates
`appearing in Exhibit 1003. Patent Owner contends that the dates are
`“inadmissible hearsay.” Paper 49, 2. Petitioner responds that the dates are
`not hearsay, and, alternatively, that a hearsay exception (the business records
`exception of Rule 803(6) or, alternatively, the “residual” exception of Rule
`803) applies. Paper 55, 21–22.
`As Petitioner points out, other panels of the Board have admitted such
`dates over hearsay objections. See Paper 55, 19–20. We agree with the
`view that the dates are not hearsay because they are not assertions. We,
`therefore, deny Patent Owner’s motion to exclude these dates. We are
`supported in this by cases such as United States v. Snow, 517 F.2d 441, 445
`(9th Cir. 1975), where a red tape bearing the defendant’s name affixed to a
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`briefcase where a gun was found was admitted as circumstantial evidence
`that the defendant possessed the weapon. To the same effect are United
`States v. Koch, 625 F.3d 470, 480 (8th Cir. 2010) (computer flash drive with
`manufacturer’s label “China” not inadmissible hearsay to prove place of
`manufacture); and United States v. Bowling, 32 F.3d 326, 328 (8th Cir.
`1994) (manufacturer’s name stamped on firearm not hearsay). We are
`persuaded by these cases that dates appearing in Exhibit 1003, like the
`examples in those cases, are circumstantial evidence of publication and not
`assertions that publication occurred on a date certain. We, therefore,
`overrule the objection and admit the dates for this purpose.2
`C. Status of the Aiteanu Thesis As Prior Art
`i. Background
`A substantial portion of the record in this case is occupied by Patent
`Owner’s challenge to the public accessibility of the Aiteanu thesis. This
`challenge has been the subject of numerous filings, conferences, and other
`communications with the Board. E.g., Paper 16; Paper 20; Paper 23; Paper
`26; Paper 31; Paper 34, Paper 35, Paper 37; Paper 40; Paper 53; Ex. 1037;
`Ex. 1051; Ex. 1047; Ex. 1049; Ex, 1052; Ex. 1034; Ex. 1038; Ex. 1039;
`Ex. 1040; Ex. 1047; Ex. 2016.
`To establish the thesis as prior art, Petitioner initially proffered, with
`the Petition, the declaration testimony of Dr. Axel Graeser, Aiteanu’s thesis
`
`
`
`
`2 We would, in any case, determine that the “residual exception” of Federal
`Rule of Evidence 807 applies, for the reasons advanced by Petitioner. See
`Paper 55, 21–23.
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`advisor at the University of Bremen. Pet. 5–6; Ex. 1002. Dr. Graeser
`testifies to the public availability of the thesis at the University’s library.
`Ex. 1002 ¶ 65. Dr. Graeser supports his testimony with documentary
`exhibits. Exs. 1004, 1018. In our Institution Decision (Paper 11), we
`concluded that the Petition had made a sufficient showing on this issue and,
`on October 6, 2016, instituted inter partes review based on the Aiteanu
`thesis:
`
`We have considered this argument in light of Dr. Graeser’s
`testimony and are persuaded that, at this stage, Petitioner has
`made a sufficient showing that Aiteanu qualifies as a printed
`publication that is prior art to the ’398 patent. . . . We, therefore,
`cannot agree with Patent Owner that there is “no evidence” that
`Aiteanu is a prior art printed publication or that it was publicly
`accessible as of March 2006. To the contrary, on this record and
`at
`this stage, we conclude Petitioner has demonstrated
`sufficiently that Aiteanu qualifies as a printed publication that is
`prior art to the ’398 patent.
`Paper 11, 7–8.
`After institution, on October 21, 2016, Patent Owner filed objections
`to the thesis itself, as well as the exhibits relied on by Dr. Graeser to
`establish public availability of the thesis. Paper 14. Shortly thereafter,
`Petitioner contacted the Board seeking an extension of the deadline for
`serving supplemental evidence in response to Patent Owner’s objections.
`See 37 C.F.R. § 42.64(b)(2).
`A conference with the Board and the parties to discuss the matter took
`place on October 31, 2016. The Board expressed concern with the nature of
`the evidentiary objections filed by Patent Owner as well as those filed by
`Petitioner, and ordered them to meet and confer and refile their objections in
`ten days. Paper 16; Ex. 1037, 5:5–22. In accordance with that Order, Patent
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`Owner filed revised evidentiary objections on November 10, 2016. Paper
`20. Patent Owner continued to object to the Aiteanu thesis, but now limited
`its objections to certain “annotations” (i.e., yellow highlighting added by
`Petitioner) to the document under Rules 1002 and 1003 of the Federal Rules
`of Evidence, and as hearsay under Rule 802, but only “as to the alleged
`publication dates of the exhibits.” Id. at 1–3.
`Patent Owner also objected to Dr. Graeser’s testimony under Federal
`Rule of Evidence 702, but “only to those portions of the declarant’s
`testimony related to the prior art status of the references on which
`[Petitioner] relies, including, for example, the declarant’s assertions that
`certain references were ‘published’ or ‘available’ under U.S. patent law on
`or before a certain date.” Id. at 2.
`On November 24, 2016, Petitioner contacted the Board to request
`additional time to provide supplemental evidence in response to Patent
`Owner’s revised objections. Ex. 1051. Petitioner stated that, in response to
`Patent Owner’s objections to certain exhibits, Dr. Graeser was preparing a
`declaration and would be available for cross-examination by Patent Owner
`on December 15, 2016. Paper 26. Patent Owner opposed the extension.
`The Board granted the request and extended the due date to December 23,
`2016. Id.
`On December 22, 2016, as requested by the Board, the parties filed a
`joint status report after meeting and conferring on the objections. Paper 31.
`The report indicated that in response to Patent Owner’s objections to the
`Aiteanu thesis, Petitioner had served supplemental evidence relating to the
`public accessibility of the thesis. Id. at 2. The report indicated also that
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`notwithstanding the supplemental evidence, Patent Owner was maintaining
`its evidentiary objection. Id. at 3–5.
`In January 2017, Petitioner requested leave to move “to file its
`previously served evidence regarding the Aiteanu dissertation[3], however
`that evidence is characterized (e.g., as supplemental evidence or
`supplemental information).” Ex. 1052. Petitioner represented that it had
`conferred with Patent Owner, and that Patent Owner opposed the request.
`Id. The Board authorized Petitioner to file a motion under 37 C.F.R
`§ 42.123 for leave to file supplemental information relating to the issue of
`whether the Aiteanu dissertation qualifies as a printed publication. Paper 34.
`
`The evidence included a supplemental declaration of Dr. Graeser (Ex.
`1047), a copy of the Aiteanu dissertation made available at Dr. Graeser’s
`deposition (Ex. 1050), a shelving record from the Bremen University
`Library (Ex. 1035), a “screen grab” of that library’s on-line search page (Ex.
`1036), Dr. Graeser’s photographs of the shelved Aiteanu dissertation (Ex.
`1039), and the library’s circulation record for the dissertation (Ex. 1040).
`ii. Patent Owner’s “Prima Facie Case” Argument
`On March 15, 2017, the Board granted Petitioner’s motion and
`authorized Petitioner to file the exhibits. Paper 40. In granting the motion,
`we determined that Petitioner met all the requirements of 37 C.F.R.
`§ 42.123(b). In reaching this conclusion, we considered Patent Owner’s
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`3 In describing the Aiteanu reference, the parties use “thesis” and
`“dissertation” interchangeably. As Dr. Graeser explains, the difference is
`that “thesis” applies during the work, while “dissertation” refers to the
`finished work. Ex. 2015, 17:13–15.
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`arguments in opposition and found them unconvincing. Specifically, we
`were not persuaded by Patent Owner’s argument that establishing Aiteanu as
`a reference is part of Petitioner’s “prima facie case.” Id. at 4. According to
`Patent Owner, Petitioner cannot submit new evidence in response to Patent
`Owner’s challenge to Aiteanu as prior art because Petitioner’s “case-in-chief
`is now closed.” Id. at 3. Further, Patent Owner asserted that whether a
`document is a printed publication relates to its sufficiency as evidence, not
`its admissibility under the Federal Rules of Evidence. Id. at 5.
`We disagreed with this “prima facie case” argument. Under the AIA
`statute, as a threshold showing for whether to institute inter partes review,
`the Board must determine that the petition shows “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Our rules
`implementing the statute contain similar language. See 37 C.F.R.
`§ 42.108(c) (requiring “a reasonable likelihood that at least one of the claims
`challenged in the petition is unpatentable.”). In instituting this proceeding,
`we considered the proofs proffered by Petitioner, including its showing that
`the Aiteanu thesis qualifies as prior art, and determined that this standard
`was met. Paper 11, 7–8.
`Moreover, the Federal Circuit has said that once trial is instituted, a
`petitioner is permitted to supplement the record. As the Court observed in
`Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d
`1360, 1367 (Fed. Cir. 2016 ): “The purpose of the trial in an inter partes
`review proceeding is to give the parties an opportunity to build a record by
`introducing evidence—not simply to weigh evidence of which the Board is
`already aware.” If the situation were otherwise, 37 C.F.R. § 42.123 would
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`be useless to petitioners. As noted above, after the supplemental evidence
`was submitted, we granted Patent Owner leave to file a sur-reply directed to
`the printed publication issue. See infra.
`iii. Patent Owner’s Sur-Reply
`We authorized Patent Owner to file a sur-reply directed to the public
`accessibility of the Aiteanu reference. Paper 53. Patent Owner’s sur-reply
`focuses its argument on Exhibit 1003, a copy of the Aiteanu thesis submitted
`with the Petition, and presents a variation of its rejected “prima facie case”
`argument. Patent Owner now contends that Petitioner “tries to pull a
`switcheroo.” Id. at 1. According to Patent Owner:
`Exhibit 1003 anchors all instituted grounds. For purposes
`of instituting trial, the Board credited Dr. Graeser’s testimony
`that Exhibit 1003 was available as prior art. After Dr. Graeser’s
`deposition, however, it became apparent Exhibit 1003 was never
`published.
`Id. Patent Owner further asserts:
`[Petitioner’s Reply] conflates Exhibits 1003, 1018, and
`1050, referring to them collectively as “Aiteanu,” to muddy the
`distinction between them. To be clear: they embody different
`documents. The Federal Rules of Evidence do not allow
`Petitioner to swap one reference for another in the instituted
`grounds.
`Id. We are not persuaded by this argument.
`
`As noted above, three copies of the Aiteanu thesis have been entered
`in the record. The first and second, Exhibits 1003 and 1018, were submitted
`with the Petition. Dr. Graeser’s testimony established that the version that is
`Exhibit 1003 is his personal copy of the thesis given to Dr. Aiteanu’s Ph.D.
`examination committee. Ex. 2015 (“Graeser Dep.”) 28:21–24. His
`testimony further explains that the bound book version produced at his
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`deposition (Ex. 1050) was the copy of the thesis provided to the Bremen
`University library.
`Q
` All right. So let me -- let me just state this
`concisely. So the book [Ex. 1050] that is -- has the red band on
`the front --
`A Yeah.
`Q -- the physical exhibit, was a document that was
`given to the library?
`A
`Yeah.
`Q
`All right. And Exhibit 1003, without the
`highlighting, was given to the author's examination committee
`and Ph.D. committee, correct?
`
`A
`Yeah.
`Id. at 28:13–24. Also, according to Dr. Graeser, Exhibit 1018 represents an
`electronic version of the thesis available for sale. Ex. 1047 (“Graeser Supp.
`Decl.”) ¶ 10.
`According to Patent Owner’s theory, these three copies “embody
`different documents.” Paper 53, 1. We do not agree. While there are minor
`formatting differences, there is no dispute that the text of the thesis does not
`change. Thus, the only differences Patent Owner identifies relate to the
`introductory pages and not to the thesis itself. Patent Owner states: “For
`example, pages 4 and 5 of Exhibit 1050 are not in Exhibit 1003.” Id. The
`so-called “missing” pages are not part of the thesis. They are introductory
`pages added by the book’s publisher, Shaker Verlag. Likewise the
`differences between Exhibits 1018 and 1003 and Exhibits 1050 and 1018
`identified by Patent Owner are minor and do not involve the thesis itself:
`“For example, page 4 of Exhibit 1050 refers to ‘Band 6.1’ and includes a
`sub-title; Page 3 of Exhibit 1018 refers to ‘Series 6-Nr.1’ and does not
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`include a sub-title.” Paper 53, 2. Dr. Graeser testifies that the subtitle was
`added by the publisher. Graeser Dep. 97:23–98:25.
`iv. Patent Owner’s Rule 1003 Argument
`Patent Owner’s argument based on Rule 1003 of the Federal Rules of
`Evidence is misplaced. That rule permits the admissibility of duplicates
`“unless a genuine question is raised about the original’s authenticity.” We
`do not understand Petitioner or Patent Owner to be asserting that the three
`documents are exact duplicates. Nor is there any question about their
`authenticity. Therefore, we do not find Rule 1003 to be applicable.
`We note, however, that there is no dispute that the text of the thesis is
`the same in each of the documents.
`v. Public Accessibility of Aiteanu
`Finally, having reviewed the procedural history of this dispute, we
`consider the merits of Petitioner’s argument that the Aiteanu thesis was
`publicly accessible. In the leading case of In re Hall, 781 F.2d 897 (Fed.
`Cir. 1986), the Federal Circuit considered what evidence is necessary to
`support the conclusion that a doctoral thesis qualifies as a printed
`publication. The Federal Circuit set the following standard:
`The proponent of the publication bar must show that
`prior to the critical date the reference was sufficiently
`accessible, at least to the public interested in the art, so that
`such a one by examining the reference could make the claimed
`invention without further research or experimentation.
`781 F.2d at 899.
`The record before the Federal Circuit in Hall indicated that the author
`of the thesis (Foldi) submitted his dissertation to the chemistry department at
`Freiburg University, in Germany, and was awarded a doctorate degree more
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`than one year before the critical date. Id. at 897. The University provided
`evidence that the Foldi dissertation was received by the library before the
`critical date, and that such dissertations are indexed in a special catalogue
`and set apart in the stacks. Id. at 897–98. In addition, the University
`provided evidence as to the date the dissertation was “most probably
`available for general use” based on general library practice. Id. at 898.
`The appellant in Hall challenged this evidence as insufficient to show
`that the dissertation was properly catalogued prior to the critical date. Id.
`Distinguishing the CCPA’s decision in In re Bayer, 568 F.2d 1357 (CCPA
`1978), the Federal Circuit concluded that the evidence from the University
`was sufficient:
`But the court [in Bayer] did not hold, as appellant would
`have it, that accessibility can only be shown by evidence
`establishing a specific date of cataloging and shelving before the
`critical date. While such evidence would be desirable, in lending
`greater certainty to the accessibility determination, the realities
`of routine business practice counsel against requiring such
`evidence. The probative value of routine business practice to
`show the performance of a specific act has long been recognized.
`. . . Therefore, we conclude that competent evidence of the
`general library practice may be relied upon to establish an
`approximate time when a thesis became accessible.
`781 F.2d at 899.
`The decision in Hall is further explained in In re Klopfenstein, 380
`F.3d 1345 (Fed. Cir. 2004). In Klopfenstein, the alleged printed publication
`was a printed slide presentation displayed continuously for two and a half
`days at a professional society meeting. 380 F.3d at 1347. The Federal
`Circuit rejected the argument that distribution and indexing was a
`requirement for a printed publication under Hall and other cases:
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`In Hall, this court determined that a thesis filed and
`indexed in a university library did count as a “printed
`publication.” . . . But the court in Hall did not rest its holding
`merely on the indexing of the thesis in question. Instead, it used
`indexing as a factor in determining “public accessibility.”
`386 F.3d at 1349.
`To the same effect is In re Lister, 583 F.3d 1307 (Fed Cir 2009):
`
`While cataloging and indexing have played a significant
`role in our cases involving library references, we have explained
`that neither cataloging nor indexing is a necessary condition for
`a reference to be publicly accessible. . . . Depending on the
`circumstances surrounding the disclosure, a variety of factors
`may be useful in determining whether a reference was publicly
`accessible.
`583 F.3d at 1312.4
`
`We begin our analysis by summarizing the record presented by
`Petitioner. Petitioner relies on the following evidence.
`Dr. Axel Graeser is Petitioner’s principal witness on this issue. In his
`initial declaration, Dr. Graeser testifies that Aiteanu’s thesis was supervised
`by him at the University of Bremen. Graeser Decl. ¶ 65. He testifies that
`according to the rules at that time, Aiteanu’s dissertation had to be deposited
`in the University’s library for Aiteanu to receive his Ph.D. Id. He further
`testifies that he confirmed the dissertation was deposited and thereafter
`available for retrieval by the public on March 3, 2006. Id. He testifies also
`
`
`4 The same rule applies to the electronic format of the Aiteanu thesis (Ex.
`1018). See Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d
`1374 (Fed. Cir. 2012) (“Thus, while often relevant to public accessibility,
`evidence of indexing is not an absolute prerequisite to establishing online
`references . . . as printed publications within the prior art.”).
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`that the work is indexed in the national library system at www.dnb.ddb.de.
`Id. He testifies that a reprint of the dissertation (Ex. 1018) bears a copyright
`and publication date and portions and excerpts based on the dissertation
`were published elsewhere. Id.
`In his supplemental declaration, Dr. Graeser confirms that he had
`reviewed shelving records at the University’s library (Ex. 1034) that confirm
`his testimony. He explains the differences in the title in the library shelving
`record and the dissertation published by Shaker Verlag in book format. He
`explains that the “subtitle” in the book format “comes from the format for
`the book series by the publisher, which is why it is not part of the
`dissertation title.” Ex. 1047 (“Graeser Supp. Decl.”) ¶ 5.
`He testifies that three copies of the thesis are available in the Bremen
`University library. Id. ¶ 6. He has visited the library and provided a screen
`shot of the library’s online catalog (Ex. 1038). The screen shot shows the
`three copies of the thesis and a date of 2006. Id. Dr. Graeser has also
`reviewed the library check-out history and determined one of the copies was
`first checked out in May 2006. Id. ¶ 9; Ex. 1040. He also testifies that the
`German national library system catalogues doctoral dissertations, and that
`German procedures require such dissertations to be deposited with the
`university library where they are catalogued into the national system.
`Graeser Supp. Decl. ¶ 10.
`Dr. Graeser further testifies: “The shelving record shows that practice
`was followed in this case, and indeed Dorin Aiteanu would not have been
`able to receive his degree if it had not been followed.” Id. Further, he
`testifies that such dissertations are then “formally published” including being
`assigned an ISBN identifier, and electronic copies are available for sale –
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`Patent RE45,398
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`this is what Exhibit 1018 represents.” Id. He testifies to having been a
`professor at the University of Bremen since well before the Aiteanu thesis
`was published, and a user of the University’s library since 1994. Id. ¶ 11.
`Dr. Graeser checked out a copy of the dissertation from the library
`and brought it to his deposition on December 15, 2016. Id. ¶ 12. At his
`deposition, on cross-examination by Patent Owner’s counsel, Dr. Graeser
`confirmed his declaration testimony that to receive his Ph.D., Aiteanu had to
`submit copies of his thesis to the library. Graeser Dep. 20:10–16. He
`confirmed that the book format (Ex. 1050) was given to the library. Id. at
`28:15–20. On redirect, he confirmed that there are no differences in
`substance among the three formats. Id. at 97:2–5. And he again explained
`the reason a subtitle appears in the book format. Id. at 97:23–98:19.
`Finally, Petitioner points to “collateral evidence” of publication in
`2006, including the shelving, checkout, and online catalogue evidence relied
`on by Dr. Graeser and made available to Patent Owner, as well as the
`selection of Shaker Verlag as the publisher of and the citation of the
`TEREBES project, which gave rise to Aiteanu’s work, in a 2004 article by
`Patent Owner’s expert, Mr. Fast. Ex. 1016, 7.
`We find that this record establishes by a preponderance of the
`evidence that the Aiteanu thesis was accessible to the public more than a
`year before the March 2010 filing date of the ’398 patent. We find Dr.
`Graeser’s testimony to be credible and properly based on his personal
`knowledge of library practices regarding publication of Ph.D. theses at the
`university where he is employed. On cross-examination, Patent Owner’s
`counsel did not effectively challenge Dr. Graeser’s credibility or his personal
`knowledge of the relevant facts. Instead, counsel focused on the differences
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`between Exhibit 1003 and the other formats of the Aiteanu thesis. Graeser
`Dep. 24:14–27:18. For the reasons discussed supra, we do not find these
`differences in format to be significant.
`At the same time, on cross-examination, Dr. Graeser provided further
`support for his conclusions. Id. at 17:18–20:12. Thus, we find that based on
`the record summarized above, the Aiteanu thesis was deposited with and
`shelved by the Bremen University library, was published in book form by
`Shaker Verlag, and appeared in the library’s on-line catalog, all well before
`the critical date.
`Patent Owner’s sur-reply contends there is “no proof of public
`accessibility of Exhibits 1003, 1018, or 1050.” Paper 53, 2. We disagree.
`At the outset, we reject Patent Owner’s framing of the issue as whether
`Exhibit 1003, per se, was publicly accessible before the critical date. Id.
`The issue of whether the Aiteanu thesis was publicly accessible does not
`depend on a particular format. As noted supra, Patent Owner’s argument
`focused on Exhibit 1003 (to the exclusion of Exhibits 1018, 1050, and all the
`other post-institution evidence introduced by Petitioner) ignores the ability
`of a Petitioner to supplement the record if appropriate. Genzyme
`Therapeutic Prods., 825 F.3d at 1367. It overlooks also the fact that, despite
`minor formatting differences, there is no dispute that the text of the Aiteanu
`thesis is the same across the three documents. Patent Owner’s challenge to
`the shelving record (Ex. 1034), online catalog screen shot (Ex. 1039), library
`check-out records (Ex. 1040), and Dr. Graeser’s supplemental declaration
`(Ex. 1047) on this basis therefore fails. Paper 53, 2–6. Dr. Graeser’s
`testimony and Petitioner’s other proofs regarding established practices for
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`publishing theses at Bremen University do not depend on the particular
`format of the document.
`Equally unavailing, in light of In re Hall, are Patent Owner’s
`arguments attacking Petitioner’s proofs as insufficiently specific. Thus, for
`example, Patent Owner criticizes Exhibits 1038 (online catalog) and 1039
`(photos of the shelved theses) as showing only that the thesis is available
`today. Paper 53, 3–4. Likewise, Patent Owner challenges the library
`circulation records (Ex. 1040) as failing to show “meaningful indexing.” Id.
`at 4. To the same effect are Patent Owner’s criticisms of Dr. Graeser’s
`supplemental declaration (Ex. 1047) as well as Exhibi
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