Theology doesn’t often overlap with patent law, so one would be hard-pressed to find a patent law decision citing the King James Bible. Even more rarely do patent attorneys see the King James Bible and William Blackstone’s 1768 Commentaries on the Laws of England cited in the same court decision, much less in the same sentence. Anyone on a scavenger hunt for obscure or snarky legal citations—or anyone curious about evidentiary proceedings at the PTAB—will want to closely review its recent decision in FLIR Systems Inc. v. Leak Surveys, Inc.
Those ancient sources supported the PTAB’s decision to exclude the testimony of a witness. The patent owner offered a witness declaration, but refused to make that witness available for cross-examination, suggesting that the petitioner could subpoena the witness. Relying on the long history of cross-examination in Anglo-American law (as demonstrated by the Bible and Blackstone’s Commentaries), the PTAB unequivocally stated that a sponsoring party is obligated to make a witness available for cross-examination, including by seeking a subpoena, rather than leaving it to an opponent to “ferret out the whereabouts” of the witness. Here, because the patent owner had not made the witness available for cross-examination, the panel excluded the testimony of the witness.
Much of the rest of this order dealt with a frequent tension between moving to exclude evidence and challenging, in a motion to exclude, the value of that evidence. At the PTAB parties may enter evidence into the record with a petition or response. An opponent bears the burden of demonstrating inadmissibility of that evidence, by showing that the evidence or a use of it violates one of the PTAB’s or federal rules of evidence.
The PTAB explained, with more modern authorities, its views on motions to exclude: “If a motion [to exclude] addresses only admissibility, then ‘no problem.’ But, if the motion addresses weight, then ‘no dice.’” The decision explains that parties should not discuss the weight that should be accorded to evidence because judges will—based on their dual legal and technical training—know how to properly evaluate the evidence. The panel instead suggests a mechanical, streamlined approach for motions to exclude evidence, even declaring that “nothing more is needed” than a short, 11-line example of a motion to exclude provided by the panel.
Despite the seemingly simple choice the PTAB presents for a motion to exclude, dealing with an opponent’s questionable evidence is still a challenge in practice.