25 Feb 2025

Strategic Exclusion: Navigating Evidence Challenges in Inter Partes Review

Dive into a comprehensive guide on the legal framework and strategic considerations for filing or opposing motions to exclude evidence, emphasizing the importance of understanding the Patent Trial and Appeal Board (PTAB) regulations and relevant case law. This practice note discusses key grounds for exclusion, such as authenticity, hearsay, and relevance, and highlights the procedural steps involved in inter partes review (IPR), from petition filing to final written decision. It also underscores the strategic value of motions to exclude, despite their low success rate, to challenge the admissibility of evidence and preserve objections for potential appeal. The note offers best practices for effectively navigating these motions, including focusing on critical evidence, adhering to deadlines, and preparing thorough legal arguments.

Read now »

Related Content                                 

  • Coordinating PTAB Proceedings with Parallel District Court Litigation
    Tap into a detailed guide for managing patent validity challenges under the America Invents Act (AIA) before PTAB alongside district court litigation. This practice note considers the strategic importance of understanding the differences between PTAB and district court proceedings, such as timing, scope, limitations, the selection of experts, settlement strategies, and insights into evaluating whether to file a PTAB petition.
  • Motion to File Supplemental Information Under 37 C.F.R. § 42.123(a) and 37 C.F.R. § 42.223(a)
    Check out guidance for preparing a motion to submit additional information in AIA trial practice before the PTAB. This template motion outlines the requirements for filing such a motion, emphasizing the need for timeliness and relevance to the claims under trial, and distinguishes between supplemental information and supplemental evidence, noting that the latter is typically associated with responding to objections. It also discusses the "interests of justice" standard for late submissions or information not directly relevant to the claims, highlighting factors like relevance, gamesmanship, and prejudice.

Practical Guidance Updates
Featuring the latest updates from your Practical Guidance account.     

  • New! Discover Practical Guidance Content and Resources
    Read  this update to see the newest additions to Practical Guidance. This guide is designed to help you find the tools and insights you need to work more efficiently and effectively.
  • The Practical Guidance Journal 2025 Edition One features guidance on what attorneys need to know about deepfake technology, a look ahead at AI risk management, an artificial intelligence checklist, and a review of cautions and key AI legal issues in DEI and employment discrimination.
  • The Generative Artificial Intelligence (AI) Resource Kit is a frequently updated collection of current Practical Guidance materials on generative AI, ChatGPT, and similar tools.
  • Read the new edition of the Practical Guidance Journal for insights into how Generative AI is transforming the legal world. Review benefits, cautions, and considerations about its use and see how your firm can get ahead of the rapidly escalating infiltration of GenAI.
  • Listen Up! The Practical Guidance and Law360 Podcasts Resource Kit features interviews with industry-leading attorneys on cutting edge issues in the law: NFTs, Cannabis, COVID and more.
  • Browse the Practical Guidance Author Center to see the 2000+ leading attorney authors contributing to our 26 practice areas. Interested in becoming a Practical Guidance author? Click here for details. Practical Guidance is committed to amplifying diverse voices of attorneys across all differences, including gender and race. 
  • Legal Developments provide the latest updates and analyses of emerging topics impacting your practice area. Visit the Legal Developments page to see the latest topics, which also include breaking legal news and related Practical Guidance content.. 
  • Document alerts allow you to stay current on legal developments that affect your practice. Find out how to set up your document alerts.    

PRACTICAL GUIDANCE CUSTOMER EMAIL EDITION ON THE WEB

Experience results today with practical guidance, legal research, and data-driven insights—all in one place.

Experience Lexis+