Motion to Exclude Improper Vehicle For Addressing Non-Responsive Evidence

by | Sep 23, 2021 | Evidentiary Issues, Motions Practice

By Lisa Furby and Dave Maiorana –

In Apple, Inc. v. Parus Holdings, Inc. (IPR2020-00686), the PTAB denied the Patent Owner’s motion to exclude portions of the Petitioner’s supplemental expert declaration.  Here the Patent Owner sought to exclude a number of paragraphs of the supplemental declaration because the testimony: 1) did not respond to arguments raised in the Patent Owner Response; 2) was an unauthorized late submission; and 3) was improperly incorporated by reference into the reply.  The PTAB agreed with the Petitioner that Patent Owner’s motion to exclude was improper and that Patent Owner should have filed a motion to strike instead.

In denying the motion, the PTAB made clear that motions to exclude should be used when a party is raising arguments about the admissibility of any evidence under the Federal Rules of Evidence.  In its decision, the PTAB pointed to 37 C.F.R. § 42.64 and the Trial Practice Guide which states 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.”).  Specifically, a motion to exclude is not the appropriate vehicle for parties seeking to exclude evidence that exceeds the proper scope of the reply or sur-reply.  Arguments concerning the scope of the evidence, as here, must be raised in a motion to strike.

Takeaway

While the PTAB case law on this procedural point is not 100% consistent, this most recent example again reinforces that challenges to improper scope of evidence and arguments submitted late in PTAB trials should be made via a motion to strike, where complaints based on violations of rules of evidence should be addressed in motions to exclude.

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David Maiorana

Partner at Jones Day
Dave Maiorana is a trial lawyer with a notable combination of significant experience as a United States Patent and Trademark Office (USPTO) Examiner and more than 25 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the International Trade Commission (ITC). Dave has experience in diverse technology areas, including e-cigarettes, teeth whitening, diapers, fem care, antibodies, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.