April, 10th, 2017

By Robert D. Keeler

Either party may file a Motion to Exclude Evidence in a post-grant proceeding without prior permission from the PTAB. These evidentiary challenges provide a potential avenue to limit your opponent’s trial record, including prior art, invention evidence, and expert declarations. However, the PTAB denies about ninety percent of these motions.[1] Despite the high denial rate, a motion to exclude may be helpful in highlighting suspect evidence. While the PTAB may ultimately deny the motion, it can encourage the Board to accord little probative value to the suspect evidence or consider it in a new light. Therefore, practitioners should consider filing strategic motions to exclude when the Board will benefit from additional context analysis of suspect evidence.

Motions to Exclude are Denied at a High Rate

There are multiple reasons for the high denial rate. First, there are many procedural hurdles to filing a proper motion to exclude. An objection to served evidence must first be filed within defined time limits, and supplemental evidence may then be served. 37 CFR § 42.64(a), (b). Accordingly, a party who objects late or has their objection cured through supplemental evidence will often have its objection denied. Also, if the PTAB feels that the objection is moot because they do not rely on the evidence in their final written opinion, they will deny the motion. See IPR2016-00019, Paper 28 at 39 (denying motions to exclude as moot because the Board “did not reference or rely upon these Exhibits in reaching this Final Written Decision.”) Interestingly, nearly half of all denials are the result of an objection rendered moot.

Similarly, the PTAB respects its role as a quasi-judicial body rendering judgement without the aid of a jury. Therefore, it often acts in public’s interest for open proceedings with complete records. See IPR2014-00164, Paper 51 (May 15, 2015) at 25-26 (“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 claims in an issued patent.”) Accordingly, public policy often weighs in favor of denying such motions. Moreover, the PTAB’s role allows it to adequately weigh evidence without the prejudice that may result with a jury. See IPR2016-00102, Paper 61 (Mar. 28, 2017) at 21-22 (finding that “we 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.”). Therefore, many motions to exclude that may be granted in a jury trial may be denied at the PTAB.

Motions to Exclude Should Always be Considered

Generally, the rarely granted motion to exclude is based on a timely recorded objection and specifically identifies and explains the reason for inadmissibility. 37 CFR § 42.64; see, e.g., IPR2015-01920, Paper 65 (Jan. 12, 2017) at 84-85 (granting motion to exclude exhibit prepared by counsel and not incorporated in expert declaration). Therefore, a motion should always be filed where exclusion is overwhelmingly proper.

Motions to exclude are still valuable assets even with less clear-cut issues. In addition to preserving the underlying objection for appeal, they help to highlight evidentiary issues for the board. This is especially true if the motion is set up by filing timely objections, holding conference calls with the Board, and dedicating demonstratives or oral argument to the exclusion issues. In this way, a motion to exclude reinforces other arguments, including those regarding the substantive weight to give evidence. Even if ultimately denied, the challenged evidence may be given less weight by the Board, or even not considered at all. Indeed, motions to exclude help tell a story regarding the evidence at issue and therefore can be beneficial even if denied.

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[1] Per information obtained from DocketNavigator.

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