Takeaway: The Board acts like a judge in a bench trial in district court. Therefore, it will not exclude evidence that goes to the weight of the testimony, such as alleged bias, but will consider it in assessing the evidence presented.

In its Decision, the Board denied in part and dismissed in part Petitioner’s Motion to Exclude Evidence. Petitioner moved to exclude as unfairly prejudicial Exhibit 2002, which is a declaration proffered by Patent Owner in support of its arguments that Petitioner did not establish the unpatentability of claims 1-28. Alternatively, Petitioner moved to exclude certain paragraphs of Exhibit 2002 for various other reasons, such as lack of foundation, being related to inadmissible legal issues, improper attorney argument, and lack of relevance.

Regarding the request to exclude the exhibit in its entirety, Petitioner argued that the declarant has a bias against Petitioner due to prior inter partes reviews in which Petitioner successfully challenged claims in four patents listing the declarant as an inventor. Patent Owner stated that there is little evidence of actual bias, and that even if there was a bias, it would go to the weight of the evidence, not the admissibility. The Board agreed, noting that these proceedings are similar to a bench trial in district court. The Board specifically stated that it was cognizant of Petitioner’s assertions when assessing the weight accorded to the declarant’s testimony. Therefore, the Board denied this request.

Regarding the request to exclude paragraphs 52-54, 63, 65, and 66 for lack of foundation, the Board agreed with Patent Owner that Petitioner’s arguments overlooked the evidence and reasoning the declarant provided in support of the statements to which Petitioner objects. The Board dismissed as moot all of the requests to exclude the remaining paragraphs on the basis that the Board did not consider those when issuing its Final Written Decision.

Mobotix Corp. v. ComCam International, Inc., IPR2015-00093

Paper 22: Decision Denying-in-part and Dismissing-in-part Petitioner’s Motion to Exclude Evidence

Dated: April 28, 2016

Patent 6,975,220 B1

Before: Michael R. Zecher, Neil T. Powell, and Frances L. Ippolito

Written by: Powell