A motion to exclude evidence must be filed to preserve any objection. The motion must identify the objections in the record in order and must explain the objections. A motion to exclude may be filed without prior authorization from the Board. 37 C.F.R. § 42.64(c). 37 C.F.R. § 42.64(b) governs the timing requirements for filing objections to evidence.
Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00002, Paper 66 (PTAB Jan. 23, 2014). A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48765, 48767 (Aug. 14, 2012). A motion to exclude evidence also must: (a) identify where in the record the objection originally was made; (b) identify where in the record the evidence sought to be excluded was relied upon by an opponent; (c) address objections to exhibits in numerical order; and (d) explain each objection. A motion to exclude is not the proper mechanism to (i) challenge the sufficiency or persuasiveness of the evidence produced by the opposing party, (ii) serve as a sur-reply, or (iii) argue that a reply contains new arguments or relies on new evidence necessary to make out a prima facie case. There is a strong public policy for making all information filed in a non-jury, quasi-judicial administrative proceeding available to the public, especially in an inter partes review which determines the patentability of claim in an issued patent. It is within the Board’s discretion to assign the appropriate weight to be accorded to evidence.
ABB Inc. v. Roy-G-Biv Corp., IPR2013-000062, Paper 84 (Apr. 11, 2014). A motion to exclude evidence is not the proper vehicle for resolution of a dispute regarding reply arguments and evidence exceeding the proper scope of a reply. A motion to exclude “must identify the objections in the record.” 37 C.F.R. §42.64(c). Patent owner’s motion does not identify where in the record an objection originally was made. If an issue arises regarding whether a reply argument or evidence in support of a reply exceeds the scope of a proper reply, the parties should contact the Board to discuss the issue.
Republic Tobacco, LP v. Fan Bao, IPR2015-00072, Paper 26 (PTAB, Jan. 4, 2016). The Board refused to exclude allegedly improper evidence because patent owner did not timely move to exclude the evidence according to the rules of 37 C.F.R. § 42.64(c). A week after petitioner’s reply, patent owner filed a paper entitled “Patent Owner’s Objection to Untimely and Improper Evidence,” asserting that exhibits submitted with the reply constituted new evidence. The Board addressed whether to classify this filing as a sur-reply, a motion to strike, or a motion to exclude. The Board determined that the paper could not be a sur-reply or a motion to strike because patent owner did not seek authorization prior to filing the paper. The Board indicated that no prior authorization was required if patent owner filed the paper to object to the evidence under 37 C.F.R. § 42.64(b)(1). However, the Board noted that patent owner did not file a motion to exclude, separate from its paper. Therefore, even if patent owner had intended its paper to serve as objections to the evidence, patent owner did not preserve its objection by timely filing a motion to exclude. The Board therefore refused to consider the merits of patent owner’s paper.
Zero Gravity Inside, Inc. v. Footbalance System Oy, IPR2015-01769, Paper 17 (PTAB Feb. 12, 2016). Prior to institution, the Board expunged petitioner’s unauthorized unopposed motion to terminate. When expunging the unauthorized motion, the Board granted the parties authorization to file a joint motion to terminate, but the parties did not file such a joint motion. Patent owner requested that petitioner be bound to statements made in the expunged unopposed motion, including that petitioner would “not offer any additional papers or arguments challenging” the patent. In the institution decision, the Board indicated that petitioner was not bound to representations made at the time the parties were attempting to come to an agreement to terminate the proceeding, because the parties ultimately failed to reach any agreement.
Oxford Nanopore Techs. Ltd. v. Univ. of Washington, IPR2014-00513, Paper 51 (PTAB Feb. 26, 2016). The Board denied patent owner’s motion to exclude the deposition testimony of petitioner’s expert, which was cited in petitioner’s reply. Patent owner argued that the evidence was prejudicial and irrelevant. As to prejudice, the Board stated that the danger of prejudice in an IPR proceeding is considerably lower than before a jury in a district court proceeding, because the Board has significant experience in evaluating expert testimony. As to relevance, the Board noted that patent owner contends that the disputed testimony is irrelevant because it is improper hindsight evidence, and is evidence of the inventor’s viewpoint, rather than that of an ordinary artisan. The issue of whether the disputed evidence should be viewed as improper hindsight or as the perspective of an inventor, rather than an ordinary artisan, goes to the testimony’s weight, rather than its admissibility.
B/E Aerospace, Inc. v. MAG Aerospace Industries, LLC, IPR2014-01510, Paper 106 (PTAB Mar. 18, 2016). The Board denied patent owner’s motion to exclude a declarant as unqualified. Patent owner argued that the qualifications of petitioner’s declarant, including that he lacks hands-on experience with the subject matter of the challenged claims and that his patents do not relate to the subject matter of the challenged claims, indicate that the declarant is not an expert in the art. The Board was not persuaded, even assuming patent owner’s assertions were true, that the declarant’s testimony should be excluded. To testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art.”
Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc., IPR2015-00609, Paper 23 (PTAB Mar. 23, 2016). The Board denied authorization for petitioner to file a motion to exclude patent owner’s objections to evidence. Petitioner argued that patent owner’s objections are “more than simple objections to the admissibility of evidence” and “constitute[] an additional brief on the merits of the proceeding in which Patent Owner introduces substantive argument and cites to additional evidence.” The Board indicated that, to the extent that patent owner’s objections introduce substantive argument and cite to additional evidence, as alleged by petitioner, the Board will consider any improper arguments and evidence.
Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01507, Paper 50 (PTAB Mar. 29, 2016). The Board expunged secondary considerations evidence filed by patent owner with a sur-reply in response to petitioner’s reply. Patent owner argued that the secondary considerations evidence was a summary of evidence introduced with the patent owner response. The Board expunged the evidence as untimely and cumulative of evidence already of record. The Board also grated petitioner’s motion to exclude a Ph.D. dissertation and a Master’s thesis submitted by patent owner to illustrate its declarant’s academic qualifications, because patent owner did not file an English translation with accompanying affidavit as required by 37 C.F.R. § 42.63(b).
Actifio, Inc. v. Delphix Corp., IPR2015-00050, Paper 57 (PTAB Mar. 31, 2016). The Board denied patent owner’s motion to exclude the supplemental declaration of petitioner’s expert as inadmissible hearsay. The Board indicated that the supplemental declaration consists of statements made by the declarant in the IPR proceeding, and therefore the statements are not “hearsay” under FRE 801(c). Rather, they are sworn testimony that is subject to cross-examination. The Board noted that patent owner cross-examined the declarant with respect to that testimony.
Chervon N. Am, Inc. v. Milwaukee Elec. Tool. Corp., IPR2015-00595, Paper 64 (PTAB Apr. 7, 2016). The Board denied authorization for petitioner to file a motion to strike patent owner’s motion to exclude because it introduced substantive arguments regarding the sufficiency of petitioner’s evidence. To the extent that patent owner’s papers contain improper argument, the panel will be able to identify such argument and treat it accordingly. The Board granted petitioner authorization to file an opposition to patent owner’s motion to exclude in order to address any arguments in patent owner’s motion to exclude it deems necessary, including any perceived substantive arguments.
Hughes Network Sys., LLC v. Calif. Inst. Of Tech., IPR2015-00059, Paper 42 (PTAB Apr. 21, 2016). The Board denied patent owner’s motion to strike as untimely, the declaration of petitioner’s in-house counsel. Patent owner does not allege that the declaration raises any new issue. Patent owner’s only complaint appears to be that it cannot respond to petitioner’s reply “with its own argument or evidence.” This is specious. First, patent owner did not even attempt to cross-examine or submit observations on that cross-examination, as permitted by the Scheduling Order and Trial Practice Guide. If such argument or evidence were likely to be fruitful, patent owner could have sought leave for a sur-reply, which it did not. Patent owner has failed to carry its burden on its motion to strike. The record shows that petitioner submitted the declaration along with its reply to respond directly to patent owner’s argument that not all RPIs were initially named by petitioner.
Enovate Medical, LLC v. InterMetro Indus. Corp., IPR2015-00300, Paper 54 (PTAB May 11, 2016). The Board sua sponte expunged a license agreement between patent owner and another entity submitted with the patent owner’s opposition to petitioner’s motion to exclude. The agreement was filed without the Board’s authorization because it was filed with patent owner’s opposition to petitioner’s motion to exclude and is not responsive to the motion to exclude. In fact, patent owner’s opposition requests that the Board enter into the record the new exhibit which was finalized subsequent to patent owner’s response. A request for relief should not be made in an opposition brief. It should be made in a motion. A motion (and, thus, a request for relief) may be filed only if authorization has been obtained.
Accord Healthcare Inc. v. Daiichi Sankyo Co., Ltd., IPR2015-00864, Paper 104 (PTAB Sept. 12, 2016). The Board denied patent owner’s motion to exclude petitioner’s exhibits and supporting declarations and deposition testimony concerning the public accessibility of the exhibits. The Board agreed with petitioner that patent owner improperly raised the issue regarding whether the challenged exhibits are prior art printed publications in a motion to exclude. Such arguments should have been presented in patent owner’s response, not a motion to exclude, because the arguments go to the weight and sufficiency of the evidence, not admissibility.