The Patent Trial and Appeal Board (“PTAB”) has recently decided a number of motions to exclude evidence under 37 C.F.R. 42.64. Based on these decisions, parties engaged in litigation before the Board should be aware that exclusion of evidence appears to be the exception, not the rule. A few of the PTAB’s recent rulings are summarized below. In Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper 66 (Jan. 23, 2014), the PTAB provided general guidance on the content of a motion to exclude. The PTAB explained that “[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:

  1. Identify where in the record the objection originally was made;
  2. Identify where in the record the evidence sought to be excluded was relied upon by an opponent;
  3. Address objections to exhibits in numerical order; and
  4. Explain each objection.

Id.” The PTAB further explained that “[w]hile a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case.”

The PTAB has further explained that it has the expertise to weigh the evidence without excluding it. “We also agree with [Petitioner] 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 to be reversible error.’” Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper 66 (Jan. 23, 2014). Moreover, the Board has explained that a motion to exclude based on relevance “is not likely to be successful except in a rare situation, because the Board is capable of according the proper weight to the evidence, including none, based on the pertinence of the evidence.” Toyota Motor Corp. v. Am. Vehicular Sciences LLC, IPR2013-00419, Paper 25 (Feb. 11, 2014); Toyota Motor Corp. v. Am. Vehicular Sciences LLC, IPR2013-00420, Paper 22 (Feb. 11, 2014); Toyota Motor Corp. v. Am. Vehicular Sciences LLC, IPR2013-00421, Paper 21 (Feb. 11, 2014); Toyota Motor Corp. v. Am. Vehicular Sciences LLC, IPR2013-00422, Paper 20 (Feb. 11, 2014).