Takeaway: Evidence in the form of out of court statements purporting to establish an invention date cannot be authenticated by the testimony of the declarant that the statements are what they purport to be.

In its Decision, the Board granted-in-part and denied-in-part Petitioner’s Motion to Exclude Evidence. Petitioner had objected to several of Patent Owner’s exhibits on either hearsay or authentication grounds, and the Board agreed that Exhibits 2002, 2003, 2006, 2012, 2013, 2057, and 2062 should be excluded.

First, the Board addressed the authentication of Exhibits 2002, 2003, and 2006. The Board stated that to authenticate evidence, “the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.” With respect to Ex. 2002, a Mr. Abhari testified that the one page exhibit was a notebook page he prepared “on or near” February 20, 2008. However, the Board noted that the page was not dated, Mr. Abhari did not explain the basis for his conclusion, and two notations with an apparent date were not explained. Mr. Abhari also testified that Exhibit 2003 was a report prepared in June 2007 by Dr. Gruver, but the exhibit was not dated and had no indication that Dr. Gruver prepared it. With respect to Exhibit 2006, although Mr. Abhari testified the spreadsheet was most likely prepared by Ms. Parker, the document had no indication regarding its source.

The Board stated that while the testimony of someone with personal knowledge of the documents, such as Mr. Abhari, would normally be sufficient, more is required with respect to these exhibits. In particular, the exhibits were being relied upon to prove an invention date and, therefore, “independent evidence of authenticity is required.” For this reason, the Board held that “Mr. Abhari’s testimony cannot be used to authenticate Exhibit 2002, his unsigned, undated, and unwitnessed lab notebook page, when the same notebook page is offered to corroborate Mr. Abhari’s testimony of his actions on a particular date.” Similarly, Mr. Abhari’s testimony was not sufficient to authenticate Exhibits 2003 and 2006.

The Board then addressed the objections to hearsay. Mr. Abhari testified that Exhibits 2012 and 2013 were a status report regarding SwRI testing and a compilation of test reports from SwRI, respectively. Petitioner objected to the exhibits, arguing they are inadmissible hearsay offered for the truth of matters asserted therein. Patent Owner responded that the exhibits are admissible under the business records exception to hearsay, arguing that the documents were records of Patent Owner’s “regularly conducted research and development activities.” The Board was not persuaded, finding that the “out-of-court statements made in the documents are those of the staff at SwRI who prepared the reports, not Mr. Abhari or anyone at Syntroleum.” As the Board noted, “[t]he relevant question is whether the documents were kept in the course of SwRI’s regularly conducted activities; on this point, Mr. Abhari does not testify.” The Board also rejected Patent Owner’s argument that the exhibits were being offered for non-hearsay purposes.

Exhibit 2057 is a copy of Syntroleum meeting minutes, prepared by Mr. Abhari, and reflecting Dr. Gruver’s statements made at the meeting. Patent Owner argued the exhibit was within the business records exception, but acknowledged that the exception only addressed the “first level of alleged hearsay,” Mr. Abhari’s comments, and not Dr. Gruver’s statements. Patent Owner argued alternatively that Dr. Gruver’s statements were not being offered for the truth asserted, but were rather offered as corroborating evidence of conception. The Board was not persuaded, noting that the corroborating evidence has value only if it is true.

With respect to Exhibit 2061, a set of two emails, the Board agreed with Patent Owner that it was being offered for the fact that Mr. Abhari contacted Microtek, which is a non-hearsay use. Therefore, the motion was denied as to Exhibit 2061. Regarding Exhibit 2062, a copy of an overall project flow chart, Patent Owner relied upon the “residual exception” to hearsay, which requires that the statement: “1) have equivalent circumstantial guarantees of trustworthiness; 2) be offered as evidence of a material fact; 3) be more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts; and 4) be in the interests of justice to admit.” The Board was not persuaded that this case was an exceptional one where the residual exception would be applicable.

Finally, the Board addressed the objections to Exhibits 2001 and 2055, declining to exclude the objected to portions of Mr. Abhari’s testimony because the “Board is capable of hearing relevant evidence and weighing its probative value.”

Neste Oil Oyj v. REG Synthetic Fuels, LLC, IPR2013-00578
Paper 52: Decision on Petitioner’s Motion to Exclude Evidence
Dated: March 12, 2015
Patent: 8,231,804
Before: Rama G. Elluru, Sheridan K. Snedden, and Christopher L. Crumbley
Written by: Crumbley