By Scott A. McKeown
| January 28, 2014
PTAB Rejects Early Motions to Exclude as Improper

PTAB Rejects Early Motions to Exclude as Improper

The Patent Trial & Appeal Board (PTAB) has begun issuing a steady stream of final written decisions in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings. In these initial decisions, the Board is denying a significant number of improperly filed motions to exclude from both petitioners and patentees alike. Specifically, the Board is urging that a proper motion to exclude is not filed to: (1) challenge the sufficiency of the opposing parties evidence; (2) serve as a sur-reply; or (3) attack evidence raised in petitioner filings as being "new." Instead, a proper motion to exclude must be keyed to an earlier made evidentiary objection.

While the PTAB is diligently educating the public on the proper motion practice in the initial wave of decisions, failure to heed the guidance in these initial decisions may result in attorney sanctions down the line.

The PTAB analyzed a series of such motions in the final written decision for Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co. (CBM2012-00002, Paper 66, January 23, 2014). In Progressive, the PTAB explained:

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.

Motions to exclude do not require Board authorization prior to filing, thus, rendering them ripe for abuse. Many such motions filed in Progressive were dismissed as improper. The Board explained repeatedly that such motions are "not an opportunity to file a sur-reply, and.  . .  not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case."  With respect to "new arguments" (a common gripe of patentees) the PTAB explained that it would be unreasonable to prohibit rebuttal testimony from petitioners on content not originally referenced in their petition (i.e., issues raised by the patentee as distinguishing).

As to closer calls, the Board emphasized an overall policy of inclusion, explaining:
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. . . . We also agree with [patentee] that “the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial, without resorting to formal exclusion that might later be held reversible error.” Opp. 1 (citing e.g., S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n.3 (D. Neb. 2005)).

In other words, unless you have a very clear-cut evidentiary deficiency to point out to the Board, you may be risking sanctions in the months ahead by filing something a bit more.... "creative."

(Note: Motions to exclude will be far more appropriate in CBM and PGR proceedings that include fact witnesses, (i.e., evidence pertaining to public use/on sale bars and the like.)