By Douglas A. Robinson, Principal
The Board rarely grants motions to exclude, but it did so in Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447 (March 9, 2016). There, Patent Owner moved to exclude four exhibits; the motion was denied as two of them and granted as to the other two. Patent Owner objected to the two admissible exhibits (a data sheet and press release) on grounds of lack of authentication, inadmissible hearsay, and/or irrelevance. The PTAB dispensed with these objections quickly. Concerning authentication, a trademark notice on the document sufficiently authenticated the material. The document’s date was not hearsay: “the fact that a document bears a date is not hearsay.” As to irrelevance, the PTAB found (as is common) that the Patent Owner’s argument was really about sufficiency of the evidence, which should not be raised in the form of an irrelevance objection.
The two excluded exhibits were a current website containing a link to a downloadable datasheet, and an accompanying authentication declaration from the Internet Archive. These exhibits submitted for the first time with Petitioner’s reply. The Board noted these exhibits were not provided in response to evidentiary objections from Patent Owner, nor were they submitted in accordance with the procedures for introducing supplemental evidence or information into proceedings (37 C.F.R. § 42.64(b)(2) and 42.123(a)–(c)), despite Petitioner’s early awareness of Patent Owner’s objections to the alleged public availability of the information. Because the submission of these exhibits was untimely, the PTAB excluded them. Notably, the PTAB’s exclusion order was not based on any Federal Rule of Evidence, but rather solely on the Board’s rules concerning the timing of submissions.