Publication Shelved in Publicly Accessible Library Was Accessible to the Public and Therefore Available as Prior Art

| Karen Cassidy Selvaggio


Before NEWMAN, LOURIE, and CLEVENGER. Appeal from the Patent Trial and Appeal Board.

Summary: Publications shelved in publicly accessible libraries may be publicly available prior art references as of the date of shelving

TCL petitioned for Inter Partes Review of a patent owned by Ericsson, relating to wireless communications systems. The principal reference relied on by TCL was a foreign article, published in a German periodical, with a cover date of May/June 1996. Ericsson argued that the foreign reference was not prior art because it was not publicly available more than one year before Ericsson’s July 1, 1997 filing date. In support of its position, Ericsson submitted evidence that the article was not available at the UCLA library until October 1996. TCL provided evidence that the German reference was publicly available in the form of a letter from a German librarian. When the original librarian declined to provide a sworn statement and appear for deposition, TCL located a second librarian and filed a late declaration stating when the reference was shelved. The Board accepted the late-filed declaration over Ericsson’s objections and ruled that all of the challenged claims were unpatentable for obviousness. Ericsson appealed.

On appeal, Ericsson argued that the Board erred by (1) allowing TCL to file a late declaration corroborating the date of the reference’s public availability and (2) finding that the reference was publicly available. The Federal Circuit held that the Board did not abuse its discretion in allowing the late evidence because Ericsson had adequate notice and opportunity to respond, and that the interests of justice weighed in favor of admitting the evidence. The Federal Circuit then rejected Ericsson’s argument that public availability requires more than shelving a document in a library. The Federal Circuit distinguished this case (involving a journal that had been publicly available for at least thirty years and housed in a library that was accessible to the public) from cases where a single dissertation or thesis was housed in a library.

The Federal Circuit also affirmed the Board’s finding of obviousness, reiterating that a reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In this case, the article recited disadvantages, but did not suggest that the mode of operation would be ineffective.

Editor: Paul Stewart