Supplemental Evidence

In Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 30 (November 28, 2014), the Board denied petitioner’s motion to file as supplemental information under 37 C.F.R. § 42.123(a) declarations used in two subsequently filed inter partes reviews by third parties.

The Board found that petitioner met the criteria set forth in §42.123(a), noting that petitioner filed its request for authorization to file a Motion to Submit Supplemental Evidence within one month of the date of institution, and the patent owner did not dispute that the declarations are relevant to a claim for which the trial has been instituted.  However, the Board said that meeting §42.123(a) does not mean that the Board will automatically grant that motion, and allow submission of the supplemental information at issue, citing Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, (August 5, 2013); ZTE Corp. v. Contentguard Holdings Inc., IPR2013-00139, (July 30, 2013); Norman Int’l, Inc. v. Andrew J. Tosti Testamentary Trust, Case IPR2014-00283, slip op. at 5 (PTAB Sept. 29, 2014).

The Board has allowed submission of supplemental information where the information was alleged to confirm the public accessibility of originally cited prior art, but did not change the grounds of unpatentability authorized in the proceeding, and did not change the evidence initially presented in the petition to support those grounds. Palo Alto v. Juniper, IPR2013-00369, (February 5, 2014).  However, the Board has denied motions to supplement where the petitioner sought to use the supplemental information to bolster the challenges presented in the petition.  ZTE v. Contentguard Holdings, IPR2013-00139, (July 30, 2013)(denying entry of supplemental information where petitioner submitted information in response to claim construction by Board in institution decision); Redline Detection v. Star Envirotech, IPR2013-00106, (August 5, 2013) (“We do not read 37 C.F.R. § 42.123 as permitting a petitioner to wait for the Board to narrow the grounds submitted in the petition in order to create a more focused declaration at less expense that will bolster its position in the chosen grounds.”).

Denying entry of supplemental information which effectively changes the evidence originally relied upon in a petition is in accord with the statutory requirement that a petition must identify, with particularity, the evidence supporting the challenge to each claim.   The Board found that admitting the declarations would change the evidence relied upon in the petition, and therefore denied the motion to submit supplemental information.



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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.