It is common for both petitioners and patent owners to present expert opinion testimony in post-grant proceedings before the Patent Trail and Appeal Board (PTAB). In many cases, parties have moved to exclude all or part of the expert testimony presented by the other side. Motions to exclude evidence are frequently denied. The PTAB has emphasized that “there is a strong public policy for making all information filed in an administrative proceeding available to the public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, Paper 59 at 40 (PTAB February 24, 2014). This is particularly true of motions seeking to exclude expert testimony.
The PTAB Prefers to Attribute Appropriate Weight to Testimony Instead of Excluding It
The PTAB generally prefers to determine the appropriate weight to give expert evidence “without resorting to formal exclusion that might later be held reversible error.” Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 38 at 52 (PTAB May 31, 2016). The PTAB has explained that “[i]n an inter partes review, we regard it as the better course to have a complete record of the evidence to facilitate public access, as well as appellate review.” Sony Computer Entm’t Am. LLC v. Game Controller Tech. LLC, IPR2013-00634, Paper 32 at 31 (PTAB Apr. 14, 2015); see also Gnosis S.p.A. v. S. Alabama Med. Sci. Found., IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014) (citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“If the record on review contains not only all evidence which was clearly admissible, but also all evidence of doubtful admissibility, the court which is called upon to review the case can usually make an end of it, whereas if evidence was excluded which that court regards as having been admissible, a new trial or rehearing cannot be avoided.”)).
Parties have put forward a variety of unsuccessful arguments for excluding expert testimony. For example, challenges to a witness’ qualifications as an expert have been deemed to go to the weight of the evidence, rather than the admissibility of the evidence. See, e.g., MindGeek, s.a.r.l. v. Skky Inc., IPR2014-01236, Paper 45 at 23 (PTAB January 29, 2016); AVX Corp. v. Greatbatch, Ltd., IPR2014-00697, Paper 57 at 26 (PTAB October 21, 2015). Where a party’s objection to expert evidence goes to the weight of the testimony, a typical response from the PTAB is that “[w]e are capable of discerning from the testimony, and the evidence presented, whether the witness’ testimony should be entitled to any weight, either as a whole or with regard to specific issues.” Daiichi Sankyo Co. v. Alethia Biotherapeutics Inc., IPR2015-00291, Paper 75 at 24 (PTAB June 14, 2016). When an expert has made statements about his lack of knowledge regarding the state of the art, and the expert did not consider certain evidence in providing his opinions, the PTAB has indicated that such factors affect the weight to be accorded to the expert’s testimony, but they are not sufficient to exclude the expert’s testimony. See Primera Tech., Inc. v. Automatic Mfg. Sys., Inc., IPR2013-00196, Paper 50 at 26-30 (PTAB July 17, 2014).
Failures to apply the correct legal test, or the degree to which an expert discloses the facts or data on which the expert’s opinion is based also can affect the weight accorded the expert’s testimony, not its admissibility. See Corning Inc. v. DSM IP Assets B.V., IPR2013-00050, Paper 77 at 51-53 (PTAB May 1, 2014). The PTAB has held that an expert’s mistake or changed opinion goes to the expert’s credibility, not the admissibility of the entire testimony. See Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00112, Paper 51 at 41-45 (PTAB June 26, 2014).
The PTAB has also held that it does not matter whether an expert testifying as to the knowledge of one of ordinary skill in the art at the time of the invention was a person of ordinary skill in the art or an expert at the time of the invention. See T. Rowe Price Inv. Servs., Inc. v. Secure Axcess, LLC, CBM2015-00027, Paper 31 at 19-23 (PTAB June 13, 2016). The question is whether a witness is qualified in the pertinent art at the time that he or she testifies. Id. The PTAB has also declined to disqualify, or deny weight to the testimony of, an expert who was an employee of a patent owner. See Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., IPR2013-00290, Paper 45 at 39, 51-53 (PTAB October 23, 2014).
In the cases surveyed, such arguments to exclude expert testimony have failed, or been held to be moot. The PTAB frequently finds that it does not need to rely on challenged testimony, and has then dismissed a motion to exclude as moot. See, e.g., CoreLogic, Inc. v. Boundary Sols., Inc., IPR2015-00219, Paper 48 at 12 (PTAB May 19, 2016); NHK Seating of Am., Inc. v. Lear Corp., IPR2014-01200, Paper 29 at 21 (PTAB February 2, 2016); Geox S.p.A. v. Outdry Techs. Corp., IPR2014-01244, Paper 27 at 29 (PTAB December 18, 2015). A motion to exclude has also been dismissed where the movant did not explain how the evidence was relied upon by its proponent. See Universal Remote Control, Inc. v. Universal Elecs. Inc., IPR2014-01109, Paper 45 at 15-16 (PTAB December 16, 2015).
Where the PTAB finds that it need not rely on the evidence, one might conclude that a motion to exclude had its desired effect under certain circumstances, even if the motion is not granted. However, a party should not rely solely on a motion to exclude to present arguments that go to the weight of the evidence. To be most effective, one should use the proper tools to address expert evidence.
The Proper Tools for Addressing Expert Evidence
If a party believes that an expert is not qualified, has not supported his or her opinions with evidence, or is biased, the best approach is to present those arguments in an opposition or reply, not in a motion to exclude. The PTAB has emphasized that a party’s arguments about the sufficiency of evidence should be presented in that party’s response or reply, not in a motion to exclude. See, e.g., Valeo N. Am. V. Magna Elecs., Inc., IPR2014-01204, Paper 52 at 14-16 (PTAB Jan. 25, 2016).The PTAB has stated that “[a] motion to exclude . . . is not an appropriate mechanism for challenging the sufficiency of evidence or the proper weight that should be afforded an argument.” Laird Techs., Inc. v. GrafTech Int’l Holdings Inc., Case IPR2014-00025, Paper 45 at 42 (PTAB March 25, 2015). Conversely, arguments about admissibility may only be raised in a motion to exclude, not in a party’s response or reply. Valeo. at 14-15.
Addressing Belated Evidence
Expert declarations in support of a reply brief have been excluded where they contained materials that were outside of the proper scope of a reply. See The Scotts Co. v. Encap, LLC., IPR2013-00110, Paper 79 at 5-8 (PTAB June 24, 2014). However, presentation of belated evidence does not always result in exclusion. The Federal Circuit has upheld a PTAB decision to deny a motion to exclude an expert’s reply declaration for belatedly introducing evidence that was not in direct rebuttal to the patent owner’s opposition argument. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1082 (Fed. Cir. 2015). In the case before the PTAB, the Board concluded that a revised reply brief either did not rely on sections of the expert declaration presenting new evidence, and/or that the PTAB did not need to rely on the sections presenting new evidence. See Berk-Tek, LLC v. Belden Inc., IPR2013-00057, Paper 46 at 43-46 (PTAB March 18, 2014). The Federal Circuit held that the PTAB provided adequate opportunities for the patent owner to respond to evidence submitted with the petitioner’s reply. See Belden, 805 F.3d at 1082. In another case where cross-examination testimony was challenged as being outside the scope of direct examination, the PTAB has found that such evidence may be relevant to the credibility of the witness. See Ericsson, Inc. v. Intellectual Ventures I LLC, IPR2014-00527, Paper 41 at 14 (PTAB May 18, 2015).
This survey of PTAB decisions on motions to exclude expert testimony shows that, in most cases, a motion to exclude expert evidence will not be granted. If one wishes to point out deficiencies in an expert’s qualifications or testimony, the proper place to present those arguments is in the patent owner’s response or petitioner’s reply brief. If new arguments presented in a reply brief are supported by new testimony, the patent owner should consider filing observations on cross examination and/or requesting authorization from the PTAB to file a sur-reply. See Belden, 805 F.3d at 1082. The PTAB has frequently stated that a motion to exclude “is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply or supporting evidence is of appropriate scope.” Kyocera Corp. v. Softview LLC, IPR2013-00007, Paper 51 at 34 (PTAB March 27, 2014) (citing Zynga Inc. v. Personalized Media Commc’ns, LLC, IPR2013-00162, Paper 16 at 3 (PTAB Aug. 28, 2013).
Thus, while a motion to exclude can be a vehicle for bringing issues of admissibility to the attention of the PTAB, a party should not neglect to make all of its arguments challenging the weight or credibility of an expert’s opinions in their substantive response or reply brief, and request a sur-reply if necessary.
Motions to Exclude are Required to Preserve an Evidentiary Issue for Appeal
While motions to exclude are frequently denied, litigants before the PTAB should keep in mind that not filing a motion to exclude will result in waiver of an objection to the evidence before the PTAB and in subsequent appellate review. 37 C.F.R. § 42.64(c). However, as seen in Belden, above, the Federal Circuit has affirmed the PTAB in denying a motion to exclude expert testimony where the appellant had means to address the evidence substantively. The Federal Circuit has reversed decisions by the PTAB to exclude evidence that was presented during an IPR proceeding. For example, in REG Synthetic Fuels, LLC v. Neste Oil OYJ, the Federal Circuit reversed the PTAB’s exclusion of an email that the patent owner submitted as evidence to demonstrate an earlier date of conception to antedate an asserted reference. 841 F.3d 954, 964 (2016). The PTAB excluded the email as hearsay on the basis that the email was an out-of-court statement. The Federal Circuit reversed the PTAB’s determination, because the patent owner offered the email for the non-hearsay purpose of showing that the inventor recognized the usefulness of a claimed feature. Id.
Even though motions to exclude expert testimony are often denied by the PTAB, litigants should remember that a motion to exclude is required to preserve evidentiary issues for appeal. As demonstrated by Reg Synthetic, the Federal Circuit will review evidentiary issues if they are properly preserved for appeal.