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What To Know Before Asking The PTAB To Exclude Evidence

March 14, 2018, Law360

Scott Kamholz is quoted in a Law360 article examining what to know before asking the PTAB to exclude evidence. According to Kamholz, "Their preference is to have it in and make of it what they will, rather than go through the formal process of deciding whether to exclude it from the record."

Kamholz adds that establishing that a piece of evidence is a printed publication is something that PTAB judges are particularly sensitive about. In inter partes review, the board can only consider prior art that consists of patents or printed publications. If a party "challenges the admissibility of a piece of evidence as to whether it was a printed publication, the board sort of stops in its tracks and deals with that," he says. In contrast, challenges to something like the qualifications of an expert don't seem to get far in a motion to exclude. "I think the board's approach would be to not exclude the testimony outright, but just to say that they're going to afford that testimony little or no weight," Kamholz says.

For those who do file motions, Kamholz says to keep the filing as short and as focused as possible; limit it to issues genuinely believed to be excludable, as opposed to a blanket request or a long-shot request. He also suggests parties focus on evidence that is dispositive in nature.

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