Motion to Submit Supplemental Information as to Translation Accuracy Granted IPR2016-00006

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Takeaway: A declaration attesting to the accuracy of a translation of foreign prior art submitted as supplemental information is permissible if the request to submit supplemental information is made within one month of the date of trial institution, the information is relevant to the patentability of the claims, and it does not change the evidence initially presented in the petition.

In its Decision, the Board granted Petitioner’s unopposed motion to submit two declarations attesting to the accuracy of the English translation of a Japanese Patent Application to Kawakami as supplemental information.  As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. Continue reading

Extension of Time to Submit Supplemental Evidence Denied CBM2015-00179

Takeaway: If prior art status of a reference is contested in prior proceedings, a petitioner should address any such deficiencies in the first instance, and not rely on being granted permission to file supplemental evidence.

In its Decision, the Board denied Petitioner’s request for an extension of time to file supplemental evidence and request to file a motion to submit supplemental information, and granted Patent Owner’s request to file a motion to stay related reexamination. Continue reading

Denying Motion to Submit Declaration as Supplemental Information Where Declaration Constituted Supplemental Evidence IPR2015-01078

Takeaway: Supplemental information may only be filed if a motion to submit supplemental information is granted. By contrast, supplemental evidence is served in response to an objection to the admissibility of evidence, and may also be filed with an opposition to a motion to exclude the objected to evidence.

In its Decision, the Board denied Patent Owner’s Motion to Submit Supplemental Information and ordered that the supplemental declaration be expunged from the record. Patent Owner sought to submit as supplemental evidence a supplemental declaration from Richard Mander, Ph.D., which the Board had previously authorized Patent Owner to file. Continue reading

Order Denying Motion For Late Submission Of Supplemental Information IPR2015-01379

Takeaway: A motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier.

In its Order, the Board denied Petitioner’s Motion for Late Submission of Supplemental Information. Although the Motion had been timely filed, the Board was not persuaded that the supplemental information sought to be introduced could not have been submitted earlier.

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Order Regarding Obligation of Party to Make Third-Party Declarant Available for Cross-Examination IPR2015-01322

Takeaway: A party runs the risk that direct testimony will not be considered, if the declarant is not made available for cross-examination, even if the declarant is an employee of a third party that is requiring a subpoena before being available for cross-examination.

In its Order, the Board denied Patent Owner’s request to file a motion to strike; authorized Petitioner to file a motion to apply for a subpoena to compel the cross-examination testimony of Lindsey Miles; and authorized Patent Owner to file an opposition thereto. Continue reading

Petitioner Correctly Designated As Supplemental Information Exhibits Offered To Support Contention That References Are Prior Art IPR2015-01379

Takeaway: The moving party seeking to submit supplemental information bears the burden of proof to establish that proposed exhibits are supplemental information, rather than supplemental evidence.

In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information. Petitioner filed a Motion to Submit Supplemental Information regarding three exhibits. Patent Owner asserted that Petitioner, as the moving party seeking to submit supplemental information, bears the burden of proof to establish that proposed Exhibits 1016-1018 are supplemental information, rather than supplemental evidence. Continue reading

Motion to Submit Supplemental Information Was Granted For Public Documents But Denied For Confidential Documents IPR2015-00643, 644, 830

Takeaway: 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.

In its Decision, the Board granted-in-part and denied-in-part Patent Owner’s motion to submit supplemental information. Patent Owner sought to file nine references in the Declaration of Dr. Grabowski and a corrected version of Exhibit 2133. Patent Owner noted that several documents were erroneously not filed as exhibits with Dr. Grabowski’s declaration. Patent Owner first became aware of the error on January 12, 2016. Continue reading

Decision Granting Motion To Submit Additional Information IPR2015-01078, -01080

Takeaway: A party may not successfully oppose a motion to submit supplemental information based on the argument that the supplemental information was not included in a petition, since this is the case with any proposed supplemental information.

In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information in each of IPR2015-01078 and IPR2015-01080. The first of these involved an inter partes review of the ‘694 patent, and the second of these involved an inter partes review of the ‘954 patent.

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Authorization Denied to File Motion to Submit Supplemental Information IPR2015-01176; -01211

Takeaway: Supplemental evidence refers to evidence that is submitted in response to an evidentiary objection and offered solely to support the admissibility of the originally-filed evidence. Supplemental information is evidence submitted outside of the authorized papers that a party intends to rely on to support its argument on the merits. Continue reading

Authorization To File Motion For Late Submission of Supplemental Information After Oral Argument IPR2015-00306

Takeaway: A motion for late submission of supplemental information under § 42.123(b) must show why the supplemental information reasonably could not have been obtained earlier and that consideration of the supplemental information would be in the interests of justice.

In its Order, the Board authorized Patent Owner to file a Motion for Late Submission of Supplemental Information.     Continue reading