The PTAB recently hosted a Boardside Chat webinar on the topic of hearsay and authentication before the Board. The Administrative Patent Judges that presented were Michael Zecher, Tom Giannetti and Grace Obermann. A PowerPoint of the presentation can be found here and the Boardside Chat schedule can be found here.
The webinar began with a discussion on authentication, which is covered by Rules 901 and 902 of the Federal Rules of Evidence (FRE). Under FRE 901, "a proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is." The APJs pointed to the examples included in FRE 901(b) as ways to authenticate documents. Some of these examples include how a witness can authenticate a document by testifying that the item is what it is claimed to be. Other examples provided include how a document can be authenticated based on distinctive characteristics of the material, the document being a public record, or the document showing that a product or system produces an accurate result. Because a challenging party only needs to show that a burden of authentication has not been met, the APJs encouraged parties to authenticate evidence during the submission process.
The APJs noted that AIA trial participants often rely on web pages as prior art or as evidence of the state of the art. Parties can authenticate webpages, consistent with Rules 901 and 902 of the Federal Rules of Evidence, through the testimony of the individual that captured the webpage, based on distinctive characteristics of the web page, or by demonstrating that the web page was captured and preserved using a reliable process (e.g., the Wayback Machine). The APJs also noted that FRE 902 provides examples of many self-authenticating documents. Among these self-authenticating documents are official publications, newspapers and periodicals, and domestic public documents that are sealed and signed, and certified copies of public records.
The webinar continued with a discussion on hearsay and its exceptions, which are covered by FRE 801, 803, 804, and 807. Under FRE 801, hearsay is any statement, other than one made by the declarant while testifying at a current trial or proceeding, that is offered as evidence to prove the truth of the matter asserted. Hearsay is not admissible unless it falls within an exception, such as evidence that is a business record, a statement of the declarant's then-existing state of mind (motive, intent or plan) or if the declarant is unavailable.
In the context of AIA trials, because patent applications and patents are admissible only to prove what the specification or drawings describe, the APJs encouraged parties interested in relying on data provided in the specification or drawings to file an affidavit by someone with first-hand knowledge of how the data were obtained. The APJs also noted that parties interested in introducing laboratory notebooks into evidence may attempt to rely on the business records exception under FRE 803(6). But for a business record to qualify for that exception, the party must prove that the laboratory notebooks were created during a regularly conducted activity. If the laboratory notebooks are not admissible under one of the hearsay exceptions, then proponents may consider looking to FRE 703. Under FRE 703, an expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed. If experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion, the records need not be admissible for the opinion to be admissible.
As a takeaway, the seminar provided the APJs a great platform to share advice on ways to avoid authentication and hearsay pitfalls that they often see in their administration of AIA trials. A different panel of APJs will participate in the next Boardside Chat webinar, on February 7 (link). That webinar will focus on the differences between supplemental information and supplemental evidence in AIA trials—differences that we previously explained (here) can have profound consequences to AIA trial participants.
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