LKQ v. Clearlamp (IPR2013-00020, Paper 17): Evidentiary Objections Must Wait for Trial

LKQ Corp. v. Clearlamp, LLC, IPR2013-00020, Paper 17 (entered March 5, 2013), is a short decision about timing. Before institution, the patent owner asked the Board to exclude several of the petitioner’s exhibits as inadmissible. The Board dismissed the request because the rules provide a specific, later procedure for evidentiary challenges.

Background

LKQ’s inter partes review petition relied on three exhibits that were copies of web pages from internet discussion forums about restoring plastic headlights. The posts carried dates, and LKQ argued that the pages qualified as printed publications under 35 U.S.C. § 311(b).

In its preliminary response, Clearlamp argued that the exhibits were not authenticated and that the dates were inadmissible hearsay. It reasoned that, without those exhibits, the grounds relying on them failed and the petition should be denied in full. Although a party ordinarily needs authorization to file a motion (37 C.F.R. § 42.20(b)), the Board exercised its discretion to treat the request as a motion to exclude.

What the Board decided

The Board dismissed the motion without prejudice. It explained the framework:

• With few exceptions, the Federal Rules of Evidence apply in these proceedings (37 C.F.R. § 42.62).
• An objection to evidence submitted during the preliminary proceeding must be served within ten business days of institution, and it must state its grounds with enough particularity to allow correction (§ 42.64(b)(1)).
• The party relying on the evidence may then serve supplemental evidence to cure the objection (§ 42.64(b)(2)).
• If the objecting party still considers the evidence inadmissible, it may file a motion to exclude (§ 42.64(c)), which comes several months into the trial under the scheduling order.

Clearlamp skipped those steps. Its request was premature and would have denied LKQ the opportunity the rules give to correct the evidence. Clearlamp also gave no meaningful reason for the Board to depart from the rules and resolve admissibility as part of the institution decision. If trial were instituted, Clearlamp could object, review any supplemental evidence and move to exclude in due course.

Why it matters

The decision illustrates a basic feature of AIA trial practice: admissibility disputes are handled on a track separate from the merits. An objection is a notice that lets the other side fix the problem, for example by adding a declaration authenticating a web page or establishing its date. Only an unresolved objection becomes a motion to exclude. A patent owner who believes the petitioner has not shown that a document is a printed publication can still argue that point on the merits in a preliminary response; what it cannot do is ask the Board to exclude evidence outside the § 42.64 procedure.

For more on how evidence is handled, see evidentiary considerations in PTAB trials and supplementing the record in PTAB trials. Timing details are set by the rules and the scheduling order in each case, so readers should check the current text of § 42.64 and the Trial Practice Guide.

Key takeaways

• A motion to exclude petition exhibits in a preliminary response was premature.
• Objections to evidence come first, served within ten business days of institution, with enough particularity to allow correction.
• The offering party may cure with supplemental evidence before any motion to exclude is filed.
• Arguments about whether a document is a printed publication can still be made on the merits.