In a final written decision, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) commented that evidence can only be excluded by properly serving a notice and filing a motion to exclude, but that a motion to exclude is not the proper vehicle to dispute the scope of arguments and evidence in a reply.  ABB, Inc. v. ROY-G-BIV Corp., Case IPR2013-00063 (PTAB, May 16, 2014) (Giannetti, APJ).

Petitioner ABB requested an inter partes review (IPR) of claims of a patent owned by ROY-G-BIV.  The claimed invention relates to a system for facilitating the creation of hardware-independent software for controlling mechanical systems.  This case is one of a series of related IPRs (IP Update, Vol. 17, No. 5).  As in other cases in this series, the PTAB held that the prior art references failed to satisfy two of the claim limitations.

In this case, unlike others in this series, the patent owner stated in a footnote of the Patent Owner Response that the petitioner had not established the publication date of a reference and raised this argument again at the final hearing.  The PTAB agreed that the petitioner carried the burden to prove the publication date but instructed that the patent owner should have raised its objection by serving a notice of objection within 10 business days of institution of trial and subsequently filing a motion to exclude the evidence.  Because the PTAB decided the case on other grounds, it declined to resolve this dispute.

The patent owner also sought to exclude certain “new” arguments made in the Petitioner’s Reply and portions of the petitioner’s expert testimony.  The PTAB dismissed the motion as being moot because the PTAB decided the case on other grounds.  Nonetheless, the PTAB instructed that “a motion to exclude normally is not the proper vehicle for resolution of a dispute regarding reply arguments and evidence exceeding the proper scope of a reply” if it did not timely note an objection in the record.  Instead, “the parties should contact the Board to discuss the issue.”

Practice Note: Upon submission of any evidence or arguments by an opposing party, practitioners should promptly consider noting an objection and/or requesting permission to file a motion to exclude.