Order on Motions to Exclude and for Observations on Cross Examination IPR2013-00322


Takeaway: There is no specific provision for a “motion to strike” in the rules; instead, requesting the Board to authorize the filing of a motion to expunge is the appropriate mechanism for seeking the removal of an improperly filed paper.

In its Order, the Board summarized previous occurrences that had taken place, and then addressed motions to exclude and motions for observation that were at issue.  The Board had previously authorized Patent Owner to cross examine Petitioner’s expert who had testified in support of Petitioner’s Opposition to Patent Owner’s Motion to Amend and to cross examine that expert on his testimony in support of Petitioner’s Reply to the Patent Owner Response.  Moreover, the Board had previously ordered that any Patent Owner observations on cross examination concerning Petitioner’s expert’s testimony on the subject matter of Petitioner’s Reply to the Patent Owner Response must be filed no later than the same day that Petitioner’s observations, and any motions to exclude evidence, were due.  Petitioner then sought clarification on “the timing for objecting to and moving to exclude testimony that may be cited in Patent Owner’s observations on cross examination.”

The Board indicated that because under 37 C.F.R. § 42.64(a) an objection to the admissibility of deposition evidence must be made during the deposition, Petitioner could not now object to evidence that Petitioner did not object to during Patent Owner’s deposition of Petitioner’s expert.  Because all evidence should have been introduced and corresponding objections should have been made by this time, all motions to exclude evidence were required by the Board to be filed by the date identified in the Scheduling Order.

During a prior teleconference, Petitioner indicated that the Office Trial Practice Guide appeared to require that 37 C.F.R. § 42.64(c) motions to exclude must include an identification of the location in the record where the evidence sought to be excluded was relied upon by the other party.  In response, the Board recommended that Petitioner should indicate that its motion to exclude evidence from Petitioner’s expert’s deposition applies “to the extent that Patent Owner relies upon the subject evidence.”

Petitioner had sought guidance as to the proper scope and timing of motions to strike.  The Board noted that there is no specific provision for a “motion to strike” in its rules, and that “[a] party seeking to remove an improperly filed paper should request authorization from the Board to file a motion to expunge.”  The Board did leave open the option that a party could conceivably file a paper styled as a “motion to strike,” but not in circumstances such as in the case at issue.  The Board went on to indicate that a “motion to strike” is not a substitute for a motion to exclude evidence or an appropriate option for arguing the adequacy or merits of evidence.  In circumstances that appear to relate to an objection to the admissibility of testimony as irrelevant, as here, the proper course is a motion to exclude.

The Board thus ordered that Petitioner continues to be authorized to file a motion for observations on cross examination of reply witnesses in accordance with the corresponding date stated in the Scheduling Order; that all motions to exclude must be filed by the corresponding date identified in the Scheduling Order, and that both parties remain authorized to file responses to the respective motions for observations on cross examination not later than June 6, 2014.

Respironics, Inc. v. Zoll Medical Corporation, IPR2013-00322
Paper 30: Order Concerning Filing of Motions to Exclude and Motions for Observations on Cross Examination
Dated: May 21, 2014
Patent: 6,681,003

Before: Bryan F. Moore, Brian J. McNamara, and Scott E. Kamholz
Written by: McNamara