37 C.F.R. § 42.64(b)(2) provides that the party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.
Handi Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper 30 (PTAB June 12, 2014). The Board explained the difference between supplemental evidence under 37 C.F.R. § 42.64(b)(2) and supplemental information under 37 C.F.R. § 42.123(a). Supplemental evidence is served in response to an evidentiary objection. Supplemental evidence is offered solely to support admissibility of the originally filed evidence and to defeat a motion to exclude that evidence, and not to support any argument on the merits. On the other hand, supplemental information is evidence a party intends to support an argument on the merits.
Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, IPR2015-00690, Paper 28 (PTAB Oct. 2, 2015). The Board denied petitioner’s motion to submit supplemental information because petitioner’s proposed evidence should have been served on patent owner as supplemental evidence pursuant to 37 C.F.R. § 42.64(b)(2). Petitioner sought permission to enter a declaration attesting to the public availability of webpages catalogued by the Internet Archive. The Board stated that to the extent these items are used to support the admissibility of petitioner’s originally filed evidence, the items could be filed as exhibits if the items were served on patent owner. The Board noted that the items of evidence, described as “supplemental information,” were instead directed to patent owner’s evidentiary objections and should have been served on patent owner as supplemental evidence. Petitioner should not have sought to submit such evidence as supplemental information. Supplemental evidence, served in response to an evidentiary objection, is limited to supporting the admissibility of originally filed evidence, and cannot be used to introduce documents for the purpose of supporting an argument on the merits.
Toshiba Corp. v. Optical Devices, LLC, IPR2014-01446, Paper 31 (PTAB Mar. 9, 2016). The Board granted patent owner’s motion to exclude as untimely a webpage link to a downloadable data sheet and a screenshot submitted with petitioner’s reply. Petitioner did not serve or file those exhibits under 37 C.F.R. § 42.64(b) in response to patent owner’s evidentiary objections, nor filed under 37 C.F.R. § 42.123(b) as supplemental information. Petitioner argued that the exhibits were submitted, under 37 C.F.R. § 42.23, in response to patent owner’s arguments in its response. The Board indicated that petitioner’s reliance on 37 C.F.R. § 42.23 is misplaced, because there are rules to submit supplemental evidence or supplemental information, and petitioner did not follow those rules.