In an inter partes review, the PTAB granted a request to file a revised motion to exclude after expunging a patent owner’s original motion for failure to comply with instructions. According to the Office Patent Trial Practice Guide, 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.” 77 Fed. Reg. 48765, 48767 (Aug. 14, 2012). In recent months, the PTAB has denied several motions to exclude evidence when a movant (1) challenges the sufficiency of the non-moving party’s evidence to prove a fact, or (2) argues that a non-moving party’s filing exceeds the scope of a proper filing. See e.g., Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012–00002, Paper 66 (PTAB Jan. 23, 2014) (collecting several decisions denying a motion to exclude).

In Valeo North America, the PTAB notified the parties that a “Motion to Exclude Evidence should not include arguments alleging that a reply exceeds the scope of a proper reply.” Valeo, Inc., v. Magna Electronics Inc.,IPR2014-00220, Paper 20 (PTAB Jun. 20, 2014). Despite these instructions, Valeo filed a motion to exclude a portion of the petitioner’s reply as well as a declaration that was filed as an exhibit to the reply. The PTAB immediately expunged this motion on the basis that the patent owner did not follow the board’s instruction.

But, the board was subsequently convinced by the argument that the movant misunderstood the board’s instruction. In particular, the patent owner argued its belief that the exhibit filed with the reply was not itself a part of the reply and that the expungement was a disproportionate response to its reasonable misunderstanding. In the end, the board granted the patent owner’s request to file a revised motion to exclude with the inappropriate materials removed.

Valeo, Inc., v. Magna Electronics Inc., IPR2014-00220, Paper 52 (PTAB Feb. 2, 2015).