08/26/19

PTAB Practice Tips: Comparing a Motion to Strike and a Motion to Exclude

PTAB Practice Tips: Comparing a Motion to Strike and a Motion to Exclude

James A. Worth

Upon instituting an AIA trial proceeding, a panel of the Board issues a scheduling order that provides a timeline for discovery, for the filing of briefs, and for the date of an oral hearing. Parties may contact the Board to request an initial conference call if there is a need to propose changes to the scheduling order or propose motions that have not been provided for by the scheduling order or by the PTAB Rules. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (“TPG”); Trial Practice Guide Update (“Update”) at 24. Otherwise, parties may proceed with discovery and briefing without consulting the Board. Occasionally, parties will have a dispute about the scope of discovery or briefing that they cannot resolve on their own, and will ask the panel to resolve the issue, usually in the run up to the hearing. Disputes over the scope of argument and evidence may result in a motion to strike or a motion to exclude. 

This article reviews the nature of a motion to strike and a motion to exclude, with an eye towards comparing and contrasting their functions. To aid the comparison, this article addresses the difference between the motions in terms of their substance, timing, and procedure.

101 J. Pat. & Trademark Off. Soc’y 19 (2019)

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