Once a trial has been instituted, a party may file a motion to submit supplemental information, which is evidence a party intends to support an argument on the merits. 37 C.F.R. §§ 42.123(a) and 42.223(a).
Redline Detection LLC v. Star Envirotech, 811 F.3d 435 (Fed. Cir. 2015). Under 37 C.F.R. § 42.123, the Board has the discretion to decline review of timely filed “supplemental information” from a petitioner. The Board is entitled to deference in interpreting its own rules. Requiring the Board to accept all timely, relevant supplemental information would read out other portions of the Board’s rules, including the Board’s discretion to grant or deny motions under 37 C.F.R. § 42.5(a) and (b). The court held that the Board’s refusal to allow Redline to submit supporting declarations after institution was not an error. Redline did not submit supporting declarations with the petition in an attempt to save costs. Redline sought to submit the declarations after institution, arguing that they satisfied the “relevance” requirement under 37 C.F.R. § 42.123(a). The Board declined authorization, indicating that Redline did not provide sufficient justification for the late submission of the declarations.
CyanoTech Corp. v. Board of Trustees, IPR2013-00401, Paper 41 (PTAB May 9, 2014). The Board authorized patent owner’s motion to submit supplemental information under 37 C.F.R. § 42.123(b). Patent owner sought to submit a pair of emails from petitioner addressing a technical issue under consideration in the IPR proceeding. Patent owner argued that the supplemental documents could not have been submitted earlier because they were part of a document production consisting of over 100,000 pages. Patent owner also argued that consideration of the supplemental information would be in the interests of justice because the information includes petitioner’s own statements concerning issues under consideration in the IPR. The Board determined that the interests of justice were served by permitting entry of the supplemental information, and that any prejudice to petitioner would be negligible since petitioner will have an opportunity to cross-examine patent owner’s witnesses about the supplemental information and may introduce direct testimonial evidence with its reply.
Google Inc. v. Jongerius Panoramic Techs., IPR2013-00191, Paper 39 (PTAB Jan. 21, 2014). The Board authorized petitioner’s motion to submit supplemental information under 37 C.F.R. § 42.123(b). Petitioner filed an opposition to patent owner’s motion to amend and a supporting expert declaration, in which petitioner and the declarant cited to a European patent instead of the corresponding US patent. Petitioner sought to correct the citations, because the European patent was not prior art against the challenged patent while the counterpart US patent qualifies as prior art. The Board authorized the submission of the citation corrections as supplemental information on the basis that patent owner acknowledged the technical teachings of the US and European patents are similar, and that patent owner would have an opportunity to cross-examine petitioner’s declarant on the basis of the supplemental information.
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.
ServiceNow, Inc. v. BMC Software, Inc., IPR2015-01176, Paper 15 (PTAB Dec. 29, 2015). Petitioner requested authorization to file a motion to submit supplemental information related to certain prior art references at issue in the proceeding. Patent owner objected to the references as lacking authentication and containing hearsay. The Board determined that the evidence that petitioner intended to submit with the requested motion is more properly considered supplemental evidence under 37 C.F.R. 42.64(b)(2), instead of supplemental information, because the evidence attempts to cure patent owner’s authentication and hearsay objections. The Board therefore denied the motion since the evidence was not considered to be supplemental information.
Mylan Pharmaceuticals Inc. v. Yeda Research & Development Co. Ltd., IPR2015-00643, Paper 48 (PTAB Feb. 1, 2016). Under 37 C.F.R. 42.123(b), a motion to submit supplemental information more than one month after the date the trial is instituted must show (a) why the supplemental information reasonably could not have been obtained earlier, and (b) that consideration of the supplemental information would be in the interests-of-justice. Patent owner sought to file nine references that were cited in an expert declaration submitted with the patent owner response. Patent owner filed its motion approximately four months after institution. In the interests of justice, the Board determined that patent owner could submit documents that were not marked as confidential in the related litigation, but could not submit confidential documents from the related litigation that were not previously available to petitioner’s counsel.
Creston Electronics, Inc. v. Intuitive Building Controls, Inc., IPR2015-01379, Paper 27 (PTAB Feb. 2, 2016). The proponent of a motion to submit supplemental information has the burden of proof to establish that the proposed new information is supplemental information, rather than supplemental evidence. The Board granted petitioner’s motion to submit supplemental information under 37 C.F.R. 42.123(a) in the form of exhibits supporting the arguments on the merits of the public accessibility of three relied-upon references. Petitioner requested authorization for the motion within one month of the institution decision. The Board determined that the proffered supplemental information provides additional evidence that the prior art references for each of the instituted grounds are indeed prior art and does not change the grounds of unpatentability authorized in the proceeding or the evidence initially presented in the Petition to support those grounds of unpatentability. Evidence establishing that a reference qualifies as a printed publication is supplemental information because it is an issue going to the substantive argument on the merit of whether the reference is properly prior art.
GoPro, Inc. v. Countour IP Holding LLC, IPR2015-01078, Paper 34 (PTAB Mar. 17, 2016). The Board authorized patent owner to file a motion to submit supplemental information in the form of a supplemental declaration. Patent owner filed an expert declaration regarding alleged secondary considerations of non-obviousness with its response. In response to evidentiary objections by petitioner, patent owner served a supplemental declaration from its expert as supplemental evidence pursuant to 37 C.F.R. § 42.64(b)(2). The supplemental declaration included additional testimony designed to cure the alleged evidentiary issues with the original declaration, and provide additional “context.” Patent owner argued that it would be appropriate to file the supplemental declaration now as supplemental information to ensure a full record. The Board required the motion to detail the differences between the expert’s original and supplemental declarations, address the requirements of 37 C.F.R. § 42.123(b), and explain why the supplemental declaration, particularly the additional “context” testimony, should be submitted at that stage of the proceeding.
Chervon N. Am, Inc. v. Milwaukee Elec. Tool. Corp., IPR2015-00595, Paper 64 (PTAB Apr. 7, 2016). The Board denied authorization for patent owner authorization to file supplemental information relating to secondary considerations of non-obviousness a few weeks before the oral hearing. The Board indicated that patent owner did not show that its request to file a motion to submit supplemental information meets the requirements of 37 C.F.R. § 42.123(b). “Even accepting for the sake of argument Patent Owner’s contention that it could not obtain permission earlier from its licensees to submit the additional licenses, this earlier lack of permission does not justify filing the additional licenses at this late stage in the proceedings and denying Petitioner a fair opportunity to fully consider and address the licenses.”
Gen. Elec. Co. v. Univ. of Virginia Patent Found., IPR2016-00357, Paper 9 (PTAB Apr. 27, 2016). The Board granted petitioner authorization to file a motion to submit supplemental information under 37 C.F.R. § 42.123(c). Petitioner sought to file, prior to the Board’s institution decision, an Office Action from a related application. Petitioner asserted that the Office Action is relevant evidence because it addresses claims “nearly identical” to those at issue in the IPR proceeding, as well as some of the same prior art references asserted in the petition. Petitioner also indicated that the Office Action was not available at the time the petition was filed.
Steadymed Ltd. v. Utd. Therapeutics Corp., IPR2016-00006, Paper 25 (PTAB May 11, 2016). The Board authorized petitioner’s motion to submit supplemental information in the form of two declarations, attesting to the accuracy of the English translation of a Japanese patent application publication. The supplemental information petitioner requested to submit is relevant to the patentability of several challenged claims on which trial has been instituted under § 103(a). Petitioner has met its burden because the supplemental information does not change the grounds of unpatentability authorized in this proceeding, nor does it change the evidence initially presented in the petition to support those grounds of unpatentability. Rather, the proffered declarations constitute additional evidence that allegedly confirms the accuracy of the English translation of the Japanese reference.
Umicore AG & Co. KG v. BASF Corp., IPR2015-01121, Paper 41 (PTAB June 8, 2016). The Board denied patent owner’s motion for the late submission of supplemental information because patent owner did not sufficiently explain its delay in requesting to submit the supplemental information. Patent owner sought to submit a copy of a published patent application assigned to petitioner. Patent owner alleged that petitioner was taking inconsistent positions in the IPR proceeding relative to the publication. Patent owner indicated that it first became aware of the publication on the day it was published, but the Board noted that patent owner waited over two months to request authorization to file a motion to submit supplemental information. The Board indicated that “in the absence of an explanation for Patent Owner’s delay other than that Patent Owner was ‘examining the history of the [publication] and comparing it’ to Petitioner’s positions,…Patent Owner failed to promptly seek the relief it requests in the present motion.”
IBG LLC v. Trading Techs. Int’l, Inc., CBM2015-00161, Paper 108 (PTAB Sept. 1, 2016). The Board denied patent owner’s motion to submit supplemental information consisting of documents and briefing that had been subject to a protective order in the related district court litigation. Noting that the petition was filed in July 2015, and that trial was instituted in January 2016, patent owner was on notice several months prior to its request in May 2016. Patent owner does not explain why it waited until May 2016 to seek petitioner’s agreement on evidence subject to the protective order, and, more importantly, why patent owner did not go to the district court to seek relief from the protective order prior to July 2016. The Board also faulted patent owner for not showing why the information reasonably could not have been obtained at least prior to May 2016. The Board indicated that allowing patent owner to submit supplemental information after filing its responses “would severely undermine the Board’s ability to administer and complete these proceedings in a just, speedy, and inexpensive way.”