Intellectual Property > IP Newsflash > Motions to Submit Additional Information after AIA Review is Instituted Are Not Always Granted
15 Jan '16

The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) decision to deny the petitioner’s motion to submit supplemental information after the institution of an inter partes review. Less than a month after the IPR was instituted, the petitioner filed a Motion for Supplemental Disclosure of New Exhibits under 37 C.F.R. §42.123, requesting submission of a 60-page declaration from its expert and other evidence. The petitioner provided as its only reason for submitting the declaration late was that it would be more cost-effective for the expert to only opine on the grounds on which the board instituted the review. The PTAB and the Federal Circuit agreed that saving money was not a good enough reason to allow the submission of the expert’s declaration after institution.

37 C.F.R. §42.123 allows a party to file a motion to submit supplemental information after a review has been instituted if the following are met: (1) a request for authorization to file a motion is made within one month of the date the review is instituted and (2) the information must be relevant to a claim for which the review has been instituted.

The petitioner argued that the PTAB was required to accept its supplemental information because it met the requirements of the rule. The Federal Circuit deferred to the PTAB’s interpretation of the rule. The PTAB’s interpretation of the rule did not require the acceptance of supplemental information even if timely submitted and relevant. The Federal Circuit noted that the PTAB has been given the authority to determine a proper course of conducting a review that secures a just, speedy, and inexpensive resolution of the proceeding and the PTAB’s interpretation of the rule is in accordance with this authority. The court also found that the PTAB correctly rejected the petitioner’s motion since the information could have been submitted with the petition. Accordingly, the rule allows the filing of a motion to submit supplemental information, but there is no guarantee the motion will be granted.

Redline Detection, LLC v. Star Envirotech, Inc., No. 2015-1047 (Dec. 31, 2015 Fed. Cir.) [Lourie, Wallach (opinion), and Hughes]