Raising of Evidentiary Informalities Prior to Trial Institution
During PTAB patentability proceedings, the Federal Rules of Evidence are applied. And, while the USPTO’s definition of a “proceeding’ includes the preliminary proceeding (i.e., petition filing, preliminary response) it is important to keep in mind that the the trial Order is not the final word of the PTAB on patentability; it is simply a preliminary gauge of the merits prior to trial. The “trial” itself does not actually begin until after institution. As such motions by the Patentee that are directed to perceived evidentiary defects of the petition are deemed premature prior to trial institution.
This issue is often raised in the context of printed publications accompanying a petition to the PTAB for a patentability trial. While patents are considered self authenticating by the USPTO, publications can be considered hearsay if not authenticated by the petitioner. But, the PTAB has set the time to challenge such evidence post-institution via a motion to exclude.
As made clear in IPR2013-00020 (here), the USPTO provides a period by which such evidentiary defects can be remedied by a petitioner post-institution. So, disputing such issues via pre-institution motion, or in a preliminary response is fruitless.
When a party objects to evidence that was submitted during a preliminary proceeding, such an objection must be served within ten business days of the institution of trial. The objection to the evidence must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. This process allows the party relying on the evidence to which an objection is timely served, the opportunity to correct, by serving supplemental evidence within so many days of the service of the objection. See, 37 CFR 42.64(b)(1) and (b)(2). If, upon receiving the supplemental evidence, the opposing party is still of the opinion that the evidence is inadmissible, the opposing party may file a motion to exclude such evidence. . . .
[Petitioner's] “motion to exclude” [prior to institution] is premature and also prevents [patentee] from correcting as permitted by the rules. If a trial is instituted, [petitioner] will have full opportunity to object, serve, reconsider any supplemental evidence and finally file a motion to exclude evidence.
Of course, while such printed publications need not be authenticated for the purpose of the petition review, best practices dictate that authentication be provided to avoid wasteful jousting post-institution.