In its Decision, the Board denied Patent Owner’s Motion to Exclude certain declarations and testimony. Patent Owner filed a motion to exclude eight different specific items from declarations and testimony by witnesses for Petitioner. The Board dismissed six of the items as moot because it was not necessary to consider those items in reaching the merits of the case.
Patent Owner moved to exclude certain portions of the testimony provided with the Petitioner’s Reply on the basis that the Declarant failed to consider alternative causes. The Board denied the Motion because Patent Owner’s basis for exclusion was an argument over the merits. Merits arguments should be presented in a patent owner’s response, not a motion to exclude.
Patent Owner also moved to exclude other testimony for not disclosing facts or data on which the opinion was based. The Board noted that 37 C.F.R. § 42.65(a) generally should not be viewed as a basis for exclusion of evidence. Instead, it merely provides that little, or no, weight may be assigned to testimony failing to describe an underlying basis for an opinion.
Corning Inc. v. DSM IP Assets B.V., IPR2013-00043; IPR2013-00044
Paper 96: Decision on Motion to Exclude
Dated: May 1, 2014
Patent 7,171,103 B2; 6,961,508 B2
Before: Fred E. McKelvey, Grace Karaffa Obermann, Jennifer S. Bisk, Scott E. Kamholz, and Zhenyu Yang
Written by: McKelvey