Patents Post-Grant: Do the Federal Rules of Evidence Apply to Patent Trial & Appeal Board Petitions?

Patents Post-Grant: Do the Federal Rules of Evidence Apply to Patent Trial & Appeal Board Petitions?

Raising of Evidentiary Informalities Prior to Trial Institution

During PTAB patentability proceedings, the Federal Rules of Evidence are applied. And, while the USPTO's definition of a "proceeding' includes the preliminary proceeding (i.e., petition filing, preliminary response) it is important to keep in mind that the the trial Order is not the final word of the PTAB on patentability; it is simply a preliminary gauge of the merits prior to trial. The "trial" itself does not actually begin until after institution. As such motions by the Patentee that are directed to perceived evidentiary defects of the petition are deemed premature prior to trial institution.

This issue is often raised in the context of printed publications accompanying a petition to the PTAB for a patentability trial. While patents are considered self authenticating by the USPTO, publications can be considered hearsay if not authenticated by the petitioner. But, the PTAB has set the time to challenge such evidence post-institution via a motion to exclude.

As made clear in IPR2013-00020 (here), the USPTO provides a period by which such evidentiary defects can be remedied by a petitioner post-institution. So, disputing such issues via pre-institution motion, or in a preliminary response is fruitless.

With few exceptions, the Federal Rules of Evidence apply to inter partes proceedings. 37 CFR § 42.62. The rules governing inter partes review also set forth the proper procedure for objecting to, and moving to exclude, evidence when appropriate. When a party objects to evidence that was submitted during a preliminary proceeding, such an objection must be served within ten business days of the institution of trial. The objection to the evidence must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. This process allows the party relying on the evidence to which an objection is timely served, the opportunity to correct, by serving supplemental evidence within so many days of the service of the objection. See, 37 CFR 42.64(b)(1) and (b)(2). If, upon receiving the supplemental evidence, the opposing party is still of the opinion that the evidence is inadmissible, the opposing party may file a motion to exclude such evidence. The time for filing a motion to exclude is typically several months into a trial. See, e.g., 77 Fed. Reg. 157 (August 14, 2012) 48765 regarding Scheduling Order and Appendix A - Due Date 4.

Clearlamp has not followed the proper procedures for objecting to and/or excluding evidence. Although Clearlamp recognizes that Exhibits 1004, 1005 and 1007 have dates associated with them, Clearlamp moves for us to exclude such evidence, because the associated dates are allegedly inadmissible hearsay and because the documents have not been authenticated. Such a request to exclude evidence is typically made by way of a motion to exclude. 37 CFR § 42.64(c). As stated above, motions to exclude are not authorized until much later during a trial, if a trial is instituted. Clearlamp's "motion to exclude" is premature and also prevents LKQ from correcting as permitted by the rules. If a trial is instituted, Clearlamp will have full opportunity to object, serve, reconsider any supplemental evidence and finally file a motion to exclude evidence. To the extent that Clearlamp urges the Board to consider the evidentiary issues as part of our determination to institute a trial, Clearlamp has failed to explain, in any meaningful way, why we should deviate from the rules governing inter partes review.

When a party objects to evidence that was submitted during a preliminary proceeding, such an objection must be served within ten business days of the institution of trial. The objection to the evidence must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. This process allows the party relying on the evidence to which an objection is timely served, the opportunity to correct, by serving supplemental evidence within so many days of the service of the objection. See, 37 CFR 42.64(b)(1) and (b)(2). If, upon receiving the supplemental evidence, the opposing party is still of the opinion that the evidence is inadmissible, the opposing party may file a motion to exclude such evidence.  . . .

[Petitioner's] "motion to exclude" [prior to institution] is premature and also prevents [patentee] from correcting as permitted by the rules. If a trial is instituted, [petitioner] will have full opportunity to object, serve, reconsider any supplemental evidence and finally file a motion to exclude evidence.

(emphasis added)

Of course, while such printed publications need not be authenticated for the purpose of the petition review, best practices dictate that authentication be provided to avoid wasteful jousting post-institution.

View more from Patents Post-Grant.

For more information about LexisNexis products and solutions connect with us through our corporate site.