In the several years of post-grant practice, the Patent Trials and Appeals Board has been reluctant to grant Motions to Exclude Evidence. Instead, the Board has made clear that it strongly favors maintaining a complete record, noting that “there is a strong public policy for making all information filed in a nonjury, quasi-judicial administrative proceeding available to the public, especially in an inter partes review which determines the patentability of claims in an issued patent.” Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 68 at 59 (PTAB Feb. 11, 2014). Additionally, the Board has explained that because it is “a non-jury tribunal with administrative expertise, [it] is well-positioned to determine and assign appropriate weight to evidence presented.” Gnosis S.P.A., et al. v. S. Alabama Medical Science Foundation, IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014); see also Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00112, Paper 51 at 44-45 (PTAB June 26, 2014). Thus, parties seeking to exclude evidence face a tough road ahead.
It is particularly difficult to exclude deposition testimony of expert declarants. For example, in A.C. Dispensing Equipment Inc., v. Prince Castle LLC, IPR2014-00511, the Board rejected Patent Owner’s argument that the expert failed to meet the definition of a person of ordinary skill in the art. The Board explained that “to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art,” but rather should be “qualified in the pertinent art,” and even though he has never worked as an engineer in the field of liquid dispensing equipment, his expertise in “disciplines like Thermodynamics, Heat Transfer and Fluid Mechanics” makes him qualified in the pertinent art. See also B/E Aerospace, Inc. v. MAG Aerospace Indus., LLC, IPR 2014-01513, Paper No. 104 at 14 (PTAB Mar. 18, 2016). Similarly, the Board noted that a witness’s testimony is admissible if his or her “qualifications align with the challenged subject matter sufficiently so that his knowledge is helpful in understanding the evidence and determining facts in issue,” and he or she may “competently opine on how a person having ordinary skill in the art would have understood the claims.” Motorola Mobility, LLC v. Intellectual Ventures I, LLC, CBM 2015-0004, Paper No. 33 at 13 (PTAB Mar. 21, 2016).