Wojciak v. Nishiyama

Informative decision only: persuasive authority, not binding precedent. In an interference, data in the specification of an involved application or patent is not admissible per se to prove that the experiments were carried out as described or that the results were obtained as described, so a declaration offered for that truth is hearsay (Fed. R. Evid. 802) unless the proponent proves the declarant's first-hand knowledge or each of the eight elements of the Fed. R. Evid. 803(6) business-records exception. Where the declarant's own testimony is inconsistent about who ran the experiments and the lab notebook is not in evidence, the Board may sustain the hearsay objection. No prior precedent directly addressed this issue in the text; the Board relies on ¶ 41 of the Notice Declaring Interference, which already warned that a specification is admissible only to prove what it describes. For the opposing party, here Wojciak, the decision shows that a timely objection and motion to suppress can strip a declaration of its force on the truth of experimental data when the declarant's account of who did the work is inconsistent. For the party relying on the data, here Nishiyama, it means the declarant must clearly identify who ran which experiment, and the proponent should offer the notebooks and supplement the declarations, or the data will not come in for its truth. The Board cited Kolmes v. World Fibers Corp. (Fed. Cir. 1997) for the rule that the proponent must establish each Rule 803(6) element, and In re Epstein (Fed. Cir. 1994) for its discretion to sustain a hearsay objection under the Federal Rules of Evidence, which apply under 37 CFR § 1.671(b). LEGAL TEST OR STANDARD: Specification data is admissible only to prove what it describes. To prove the truth of the data, an affidavit from a person with first-hand knowledge of how it was generated is needed (¶ 41). Failing that, the proponent bears the burden under Fed. R. Evid. 803(6) and must establish all eight elements: [1] a report or data compilation, in any form, of [2] acts, events, conditions, opinions, or diagnoses, [3] made at or near the time by, or [4] from information transmitted by, a person with knowledge, if [5] kept in the course of a regularly conducted business activity, and [6] if it was the regular practice of that business activity to make the report or data compilation, [7] all as shown by the testimony of the custodian or other qualified witness, unless [8] the source of information or the method or circumstances of preparation indicate lack of trustworthiness. TRIGGERING FACTS: Nishiyama relied on a declaration of an inventor to prove that experiments in the specification were run and produced the reported data. The declaration said the experiments were conducted by the declarant, under his supervision, by the coinventor, or under the coinventor's supervision. On cross-examination he said no one else ran the tests, but he also admitted a faulty recollection and that the coinventor may have been involved. The coinventor did not testify, the lab notebook was not offered, and Nishiyama chose not to supplement the declaration. Wojciak timely objected and renewed the hearsay objection in its motion to suppress. KEY QUOTE: "In an interference, data based on experiments described in a specification of an involved patent or application is not admissible per se to establish that the experiments, in fact, were carried out as described, or that data generated as a consequence of the experiments (i.e., a particular result), in fact, was obtained as described." (Paper 72, p. 9) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Kolmes v. World Fibers Corp., 107 F.3d 1534 (Fed. Cir. 1997), and In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994). It distinguished In re Reuter, 670 F.2d 1015 (CCPA 1981), which allowed hearsay in ex parte prosecution, and cited Alpert v. Slatin, 305 F.2d 891 (CCPA 1962), in a Cf. cite. PRACTICE TIP: If you rely on specification data for its truth, file declarations from each person with first-hand knowledge. Make clear who ran which experiment, put the underlying notebooks in evidence with the notebook author explaining them, and supplement the declarations after an objection instead of relying on cross-examination to fix gaps. If you oppose that data, object on hearsay in time and renew the objection in a motion to suppress. Also assign an exhibit number to a served but unfiled objection that accompanies the motion.