Patently True: Rule 803(8) & the United States Patent and Trademark Office
Today, a student stopped by my office and asked about whether patents are admissible despite the rule against hearsay. My inclination was to respond that they would be admissible under Federal Rule of Evidence 803(8), which provides an exception to the rule against hearsay for
A record or statement of a public office if:
(A) it sets out:
(i) the office’s activities;
(ii) a matter observed while under a legal duty to report, but not including, in a criminal case, a matter observed by law-enforcement personnel; or
(iii) in a civil case or against the government in a criminal case, factual findings from a legally authorized investigation; and
(B) neither the source of information nor other circumstances indicate a lack of trustworthiness.
So, are patents admissible under Rule 803(8)? And what about other documents issued by the United States Patent and Trademark Office? Let’s take a look at the opinion of the United States District Court for the Northern District of California in Fresenius Medical Care Holdings, Inc. v. Baxter Intern., Inc., 2006 WL 1330003 (N.D. Cal. 2006).
In Baxter Intern., Fresenius filed a Complaint for Declaratory Judgment of Non-infringement and Invalidity against Baxter, alleging that its hemodialysis machines did not violate four or five or Baxter’s patents. Before trial, Baxter moved to strike four exhibits on the ground that they did not fall within the public records exception contained in Federal Rule of Evidence 803(8):
(1) an August 2003 opinion of the U.S. Patent and Trademark Office’s (“PTO”) Board of Patent Appeals and Interferences concerning U.S. Patent Application No. 09/711,240…; (2) a June 2005 Office Action by a PTO Examiner concerning U.S. Patent Application No. 10/461,322…; (3) a November 2005 PTO order granting reexamination of the ′13 1 Patent…; and (4) a January 2006 PTO order granting reexamination of the ′434 Patent….
In response, the Northern District of California concluded that “[t]he United States Patent and Trademark Office (“PTO”) is an agency of the United States, within the Department of Commerce, and thus falls squarely within the ‘public offices or agencies’ requirement of Rule 803(8).” Therefore, documents it issues, including patents, are presumptively admissible under Rule 803(8).
Baxter responded that some of the documents it moved to strike were not “final” and that this lack of finality precluded admission under Rule 803(8). The Northern District of California in turn responded that
Baxter does not cite a single case in support of its Motion where a court has excluded PTO documents as inadmissible hearsay. To the contrary, courts regularly consider such documents when construing claims for the purposes of infringement and validity analyses. See, e.g., Terlep v. Brinkmann Corp., 418 F.3d 1368, 1382 (Fed.Cir.2005); Biagro W. Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1303 (Fed.Cir.2005) (acknowledging that a statement made by an examiner during reexamination could show how a person skilled in the art would interpret claim language).
Moreover, the court found that Baxter had failed to prove that the subject documents were anything other than final; indeed, the court noted that Baxter itself relied upon PTO documents of a similar level of finality to prove some of its claims.
-CM