Two recent PTAB final written decisions illustrate the difficulty in convincing the PTAB to grant a motion to exclude evidence, in particular on the grounds of relevance, more particularly for evidence submitted in support of a party’s claim construction position.

In Ericsson Inc. v Intellectual Ventures II LLC (PTAB-IPR2014-00915), the Patent Owner filed a motion to exclude evidence of documents in the prosecution history of a related European patent, as well as to exclude two publications that were published well after the patent priority date, but were submitted as evidence in a related district court proceeding as relevant to the patent owner’s claim interpretation positions.  With respect to the European patent, despite the acknowledgement by the PTAB that laws and rules are different in Europe, and a previous PTAB decision (Volkswagen Group of America, Inc. v. Emerachem Holdings, LLC, Case IPR2014-01557, slip op. at 15 (PTAB Mar. 16, 2015) (Paper 13)) that held that whatever happened in the European Patent Office (“EPO”) is essentially irrelevant, the Board determined that the European prosecution history evidence was probative of whether a cited reference is analogous art to the patent under review, and admitted the evidence for this limited purpose.  The Board also determined that the post-dated publications submitted in District Court litigation that discussed terms and features recited in the claims were relevant to show how the Patent Owner had been interpreting its claims during proceedings to enforce the patent.

In support of its decision to permit filing of documents relating to infringement litigation, the PTAB cited the well-known rule  “that patent owners may not, like a “nose of wax,” twist the meaning of patent claims one way to avoid a finding of unpatentability and in another way so as to find infringement.”

In support of its decision to permit filing of documents relating to infringement litigation, the PTAB cited the well-known rule  “that patent owners may not, like a “nose of wax,” twist the meaning of patent claims one way to avoid a finding of unpatentability and in another way so as to find infringement.” See Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004) (quoting White v. Dunbar, 119 U.S. 47, 51–52 (1886).

Similarly, in Google Inc. v. Intellectual Ventures II LLC, (IPR2014-01031 Dec. 7, 2015), the Patent Owner filed a motion to exclude many items submitted by the Petitioner, including evidence of the Patent Owner’s own claim construction brief filed in related District Court proceedings.  The PTAB explained that because the parties are engaged in a vigorous dispute over the proper construction of terms in the claims it is appropriate to allow such evidence “because it sheds light on whether Intellectual Ventures is being consistent on the claim construction positions that it is taking in two different forums.”

Also common between these two decisions was the admissibility of dictionary definitions of terms in the claims although the dictionary reference was taken from publications that were published well after the patent filing date.  The Board asserted that it is well-known that judges can consult dictionaries or other publications when construing claim terms so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents, and in these two cases, the publication date of the definition will be taken into account and given proper weight when considering all the evidence.  Of note, the panel and author for both cases are the same.

While the denial of motions to exclude evidence is not new to IPR proceedings, these cases illustrate the Board’s broad view of evidence that may be relevant to claim construction, including evidence from prosecution of related foreign patents, and evidence concerning enforcement of a patent under review.  These cases further illustrate the PTAB’s discretion in admitting evidence they see as relevant to the proceedings.  Petitioners and Patent Owners alike should be aware of the broad scope of evidence that may be admitted and considered by the Board in support of claim construction arguments, including foreign prosecution documents.