Patent Owners have often made the argument that certain art of record in an inter partes review is not actually prior art. The proper way to remove that evidence from the record is via a Motion to Exclude, not merely by making arguments in a Patent Owner Response or at the oral hearing. This issue, and an improper attempt at exclusion, arose in ABB, Inc. v. Roy-G-Biv Corporation, IPR2013-00063, involving US Pat. No. 6,513,058.

Earlier in a previous inter partes review proceeding, Patent Owner had argued that the invention of the ‘058 patent was conceived and reduced to practice prior to the effective art date of the relied-upon prior art references. As such, Patent Owner asserted that the references relied upon in the challenge were not available as prior art. Decision at 5-6. The Board rejected this argument in the earlier IPR as lacking adequate evidentiary support for diligence in reducing the invention to practice. Id. at 6.

In this later proceeding, Patent Owner made additional arguments and cited additional cases, all in an unsuccessful attempt to convince the Board. As a backup argument, Patent Owner argued that Petitioner failed to meet its burden of proof in establishing the publication date of one of the references, and therefore the reference was not eligible as prior art. This challenge, however, was made at the final hearing – not as part of a motion to exclude the prior art reference. Id. at 8.

The Board found that Patent Owner’s argument was untimely, including that the final hearing “is not the place to advance a new theory of the case.” Order at 9. Further, pursuant to 37 C.F.R. § 42.64(b)(1), an objection to the admissibility of a reference must be served within ten business days of the institution of the trial. This must be followed by a motion to exclude the reference. Id. at 8. However, Patent Owner did not raise an objection to the reference nor did it file a motion to exclude.  With these actions now time barred, the Board deemed Patent Owner’s attempt to challenge the art-date of the reference to be untimely. Id. at 9.