There is one constant among the Patent Trial and Appeals Board’s (PTAB) process in inter partes reviews: it is unlikely to grant a motion to exclude evidence. The number of denied motions might actually be lower, effectively, because a significant number of motions are denied “as moot.” That is, the motion is denied because the PTAB did not rely on the exhibit in the ultimate decision. In those cases, the motion to exclude might have influenced the PTAB’s willingness to use that exhibit. Another implication of this pattern is that parties can submit evidence more freely than they might in federal court because there is such a small likelihood that the exhibit will be excluded.

Background

Parties who want to exclude evidence must act quickly. If the PTAB has instituted a trial, objections to specific exhibits must be filed within 5 business days of the exhibit’s submission. 37 C.F.R. § 42.64(b)(1). Objections must be made within 10 business days of the PTAB’s decision to institute trial for any exhibit submitted before trial institution. Id.

A party may later move to exclude the evidence under any of the Federal Rules of Evidence once the exhibit is objected to. Typically, parties have relied upon hearsay, relevance, qualification of the expert, not timely disclosed or authentication as grounds for exclusion. The PTAB has made clear, repeatedly, that these motions are not a forum for argument or for challenging the proper weight accorded to an exhibit. Additionally, the PTAB has held that motions are not the proper method for opposing improperly submitted reply evidence. E.g., Corning Inc. v. DSM IP Assets B.V., IPR2013-00047, Paper 84, p. 7, n. 3 (May 1, 2014).

Motions to exclude are filed after the close of discovery and before the oral hearing, if there is one. Yet motions to exclude are not decided until the Final Written Decision. Thus, a moving party could rely upon the evidence at issue at an oral hearing, but later have it excluded in the Final Written Decision.  That said, the PTAB has clarified that oral hearings in inter partes reviews are not forums for case presentation. So the likelihood of a party relying on a later-excluded exhibit at oral argument appears minimal under current practice.

Review of the PTAB’s Decisions on Motions to Exclude Evidence

Most motions to exclude have failed in two ways: the PTAB denies them outright or as moot.

Outright Denial of Motions to Exclude

The PTAB has denied motions to exclude because, for example, “the PTAB, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented.” Gnosis S.P.A., et al. v. S. Alabama Medical Science Foundation, IPR2013-00118, Paper 64, p. 43 (June 20, 2014); see also, e.g., Vibrant Media, Inc. v. General Electric Co., IPR2013-00170, Paper 56, pp. 32-33 (June 26, 2014) (declining to exclude specific paragraphs of an expert’s rebuttal declaration), Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00112, Paper 51, pp. 44-45 (June 26, 2014), and Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 68, pp. 59-60 (February 11, 2014) (declining to exclude any portion of an expert’s second declaration). The PTAB might consider the evidence but accord it little to no weight based on the reasons proffered in the motion to exclude.

Additionally, the PTAB has outright denied motions to exclude because the basis for the objection, such as the relevance of the facts to claim construction, is not applicable for what the PTAB used the evidence for, such as the skill of one in the art. E.g., Nuvasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206, Paper 65, p. (July 10, 2014).

These are just two of many examples of the PTAB’s reasons for its outright denial of motions to exclude.

Denial as Moot            

The PTAB typically supports the denial of a motion to exclude as moot by stating that the decision does not rely upon the specific portions of the evidence at issue. E.g., Smith & Nephew, Inc. v. Convatec Technologies, Inc., IPR2013-00102, Paper 87, p. 56 (May 29, 2014). One interpretation of those denials is that the PTAB actually considered the evidence before deciding it was unnecessary. In that instance, the evidence at issue was effectively admitted because the decision-maker reviewed the exhibit.

As of July 15, 2014, the PTAB has issued about 72 decisions on motions to exclude evidence in Final Written Decisions. Just five motions to exclude have been granted and those were only granted-in-part. Of those granted-in-part motions, only two exhibits were effectively excluded.

Combining two related inter partes reviews, the PTAB issued a Decision on Motions to Exclude and granted Petitioner’s motion to exclude in part under Federal Rules of Evidence 803(6). Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, IPR2013-00044, Paper 94 (May 1, 2014) (finding the proffered evidence, “specific and unique scientific experimental work,” was not admissible under the “business record” exception). However, the PTAB then denied the motion with respect to whether the expert could rely on the evidence in forming his opinion, effectively admitting the exhibits. Id.

In another Final Written Decision, the PTAB granted in-part a motion to exclude because the evidence was of improper scope. Corning Inc. v. DSM IP Assets B.V., IPR2013-00052 Paper 88 (May 1, 2014). But in a footnote, the PTAB noted that, moving forward, the issue of improper scope should be raised not in a motion to exclude, but during a conference call or during oral argument. Id., p. 22-23, n. 13. Thus, the reasoning used in this Decision is inapplicable to future motions.

The PTAB granted-in-part a motion to exclude a second declaration submitted by the Patent Owner in support of its Reply to Petitioner’s Motion to Amend. The Scotts Company, LLC v. Encap, LLC, IPR2013-00110, Paper 79 (June 24, 2014). The PTAB excluded the witness’ declaration as untimely because “it is clear that the majority of the Declaration is in support of Encap’s Motion to Amend rather than in rebuttal to Scotts Company’s Opposition to Encap’s Motion to Amnd [sic].” Id., p. 7.

Thus only two exhibits, out of hundreds that were the subject of motions to exclude, actually have been excluded in Final Written Decisions.

Potential Implications

These results have important practice implications for both the Petitioner and Patent Owner in an inter partes review.

First, although the PTAB denies just about every motion to exclude, by filing said motion, the party has flagged the one or more exhibits as potentially inadmissible. As shown above, many decisions deny motions to exclude because the PTAB did not rely on that particular piece of evidence. The PTAB may have chosen not to rely on that exhibit because of its questionable admissibility, so the motion was effectively granted. At a minimum, the PTAB must read and consider the motion to exclude, which likely influences the weight accorded to a particular piece of evidence.

Second, it appears that the parties should submit evidence even if it might be subject to exclusion under the Federal Rules of Evidence. The PTAB will at least review the evidence, which could influence the ultimate result, even if the particular exhibit is not relied upon in the final decision. It appears that this tactic will not work unless the submission is timely and, if submitted with a Reply, actually responsive to arguments in the patentee’s response.

Finally, inter partes reviews are expensive proceedings. Given the overwhelming likelihood that a motion will be denied, the cost of attorney time drafting objections and motions to exclude should be a factor in determining whether to actually move to exclude evidence.