By: Matt Johnson, Josh Nightingale, and Grant Hebrank*

The Patent Trial and Appeal Board held a Boardside Chat webinar on June 7, 2018, during which Administrative Patent Judges Justin T. Arbes and Kevin W. Cherry discussed motions to exclude and motions to strike in AIA trials.  Judges Arbes and Cherry referenced a PowerPoint presentation, which may be accessed here.

Motions to exclude may be filed in AIA trials when a party wishes to challenge the admissibility of evidence, including documents, deposition testimony, declarations, and portions thereof.  The moving party bears the burden of showing why the evidence in question is inadmissible under the Federal Rules of Evidence or another relevant rule.

By contrast, motions to strike are used to request that the Board remove or make immaterial some or all of an opponent’s legal pleading.  Motions to strike are most often seen in relation to petitioner replies, with patent owners commonly arguing that portions of a reply exceed the proper scope and should therefore be stricken.  As with motions to exclude, the party moving to strike bears the burden of showing why the requested relief should be granted.

Both motions to exclude and strike require prior Board authorization for entry under 37 C.F.R. § 42.20(b).  During the webinar, the Board explained that failure to seek authorization when filing a motion is one of the most common mistakes seen in PTAB proceedings.  The Board further explained that in reviewing a request to authorize a motion, it generally varies the level of scrutiny given to the request in proportion to the type of relief requested.  Thus, for instance, a high level of scrutiny is generally applied to motions to strike because they are seen as a relatively harsh form of relief.  Motions to exclude, by contrast, receive no scrutiny and are automatically authorized.

During the webinar, the judges outlined advantageous practices as well as common pitfalls they encounter in motions to exclude and strike.  For motions to exclude, the judges stressed the importance of focusing on the most important evidence to be excluded and explaining exactly why that evidence should be excluded, as opposed to taking a “shotgun” approach of challenging broad swathes of evidence with less-developed arguments.  Additionally, motions to exclude should focus on the best bases for excluding evidence.  For example, when a piece of evidence potentially violates many rules of evidence, it is better to thoroughly explain the basis for exclusion under the one or two most relevant rules rather than briefly explain all of the possible rule violations.  Additionally, the judges cautioned against treating motions to exclude as additional merit briefs, which is improper.

The judges also stressed that motions to strike should be narrowly focused on the most important issues, rather than being a laundry list of weakly developed arguments.  The judges further encouraged movants to include proposals for alternative forms of relief, should the Board not wish to authorize the motion to strike.  For example, a party may request permission to file a list of allegedly improper arguments prior to oral argument as alternative relief.  Like motions to exclude, motions to strike should be succinct, as shorter motions are more likely to be authorized.  Finally, the Board cautioned, practitioners should avoid ad hominem attacks against opposing counsel.

*Grant Hebrank is a 2018 Jones Day Summer Associate

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 225 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.