Takeaway: Under 37 C.F.R. 42.64(c), motions to exclude, which are made in order to seek the exclusion of evidence for evidentiary objections previously made on the record, must identify objections in the record.

In its Order, the Board clarified that serial objections were not required in order for Patent Owner to preserve its right to file a motion to exclude the Fry reference (“Fry”) filed as Exhibit 1006.

Patent Owner had previously filed Objections to Evidence objecting to the admissibility of Fry.  Petitioner thereafter filed supplemental evidence (comprising Exhibits 1016 through 1019), and both Patent Owner and Petitioner agreed that an additional objection was not required in order for Patent Owner to preserve its right to file a motion to exclude Fry.

After considering these points, the Board concluded that it was not necessary for Patent Owner to serve an additional objection in order to preserve its right to file a motion to exclude Fry, even though Petitioner had filed and served supplemental evidence after making Fry of record. 37 C.F.R. 42.64(c).  The Board went on to clarify that its conclusion with regard to this issue only related to Petitioner’s filing of a motion to exclude Fry, taking care to note that to date Petitioner had not relied upon the supplemental evidence in any of its substantive papers.

American Honda Motor Co., Inc .v. American Vehicular Sciences LLC, IPR2014-00633
Paper 15: Order on Conduct of Proceedings 
Dated: November 3, 2014 
Patent 7,650,210 B2 
Before: Barbara A. Parvis and Gregg I. Anderson
Written by: Parvis