Evidentiary Considerations in PTAB Trials

A PTAB trial is decided on a written record. There is no jury and usually no live testimony, but the Board still applies rules of evidence, and parties still win and lose on what is properly in the record. The evidence rules for AIA trials are in 37 C.F.R. §§ 42.61 through 42.65.

This article walks through how evidence enters the record, how it is challenged, and some recurring problems.

The Federal Rules of Evidence apply

Under 37 C.F.R. § 42.62, the Federal Rules of Evidence generally apply to AIA trials, subject to some exceptions and modifications set out in the rule. Hearsay, authentication and relevance objections therefore work much as they do in court, even though the panel of administrative patent judges, not a jury, weighs the evidence.

Section 42.61 sets basic admissibility requirements. Evidence that is not taken, sought or filed in accordance with the Part 42 rules is not admissible. The rule also addresses the admissibility of USPTO records and of specific documents.

Section 42.63 requires all evidence to be filed as exhibits, labeled and numbered in the manner the rules describe.

Testimony: declarations and depositions

Uncompelled direct testimony is presented by affidavit or declaration (§ 42.53(a)). Cross-examination of a declarant normally takes place by deposition as routine discovery, and the transcript is filed as an exhibit. Redirect and recross occur in the same deposition. See taking a deposition in an IPR or PGR.

The practical effect is that each side’s expert opinions are fixed in writing before cross-examination. A declarant who cannot defend those opinions on cross may lose credibility for the entire record.

Objections, supplemental evidence and motions to exclude

Section 42.64 creates a three-step process:

1. Object. Objections to evidence submitted during the preliminary proceeding must be made within ten business days of institution. Once a trial is instituted, objections must be made within five business days of service of the evidence. Objections to deposition testimony are made during the deposition. Each objection must identify its grounds with enough particularity to allow correction.
2. Cure with supplemental evidence. The party relying on the challenged evidence may respond by serving supplemental evidence within ten business days of service of the objection (§ 42.64(b)(2)). This is how missing authentication or foundation is often supplied. It is different from the “supplemental information” motion under § 42.123, discussed in supplementing the record.
3. Move to exclude. To preserve an objection, a party must file a motion to exclude (§ 42.64(c)). The motion identifies the objection in the record and explains it. The timing is set in the scheduling order, typically late in the trial.

An objection that is not timely made may be waived. Because motions to exclude address admissibility, the Board has often said that arguments about the weight or persuasiveness of evidence belong in the merits briefs instead.

Expert testimony

Section 42.65(a) states that expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. Conclusory declarations that repeat the petition’s arguments are a common target. The same rule says testimony on United States patent law or patent examination practice will not be admitted.

Under § 42.65(b), a party relying on a technical test or data from a test must provide an affidavit explaining the test, including why it was performed, how it was performed and what the results mean.

Recurring issues

Printed publication status

IPR grounds must rest on patents and printed publications (35 U.S.C. § 311(b)). Whether a document qualifies as a printed publication turns on public accessibility before the critical date. That is a factual question, and the petitioner must support it with evidence, such as library records, dates of indexing or cataloging, archival website captures with a supporting declaration, or testimony about distribution. A date printed on a document may not be enough by itself.

Translations

A party relying on a document in a language other than English must file a translation and an affidavit attesting to its accuracy (§ 42.63(b)). Disputes over translation accuracy can affect what the reference actually discloses.

Authentication and hearsay

Internet materials, product literature and industry documents often draw authentication and hearsay objections. Many such objections can be addressed through supplemental evidence, which is one reason the timing of objections matters.

Comparing the main tools

Tool	Rule	Purpose
Objection	§ 42.64(a)–(b)(1)	Give notice of an admissibility problem
Supplemental evidence	§ 42.64(b)(2)	Cure the objection
Motion to exclude	§ 42.64(c)	Preserve and decide the objection
Supplemental information	§ 42.123	Add new relevant information to the record, by motion

Key takeaways

• The Federal Rules of Evidence generally apply in AIA trials (§ 42.62).
• Objections must be made on a short timetable, can be cured with supplemental evidence, and must be preserved by a motion to exclude (§ 42.64).
• Expert testimony without underlying facts or data may receive little or no weight (§ 42.65(a)).
• Public accessibility of a printed publication must be proven with evidence, and foreign documents need translations with an affidavit of accuracy (§ 42.63(b)).