Takeaway: The Board may deny a party’s request for authorization to file a motion to supplement if, among other things, there has been an appreciable delay between the date of availability of the additional testimonial evidence and the date of the request for authorization to file the motion.
In its Order, the Board summarized a teleconference with counsel for the parties that had taken place on May 19, 2014. During the teleconference, Petitioner had requested authorization to file a motion to supplement its Petition to provide additional testimony from a third party deposition that it had taken in an unrelated litigation regarding the public availability of a reference. Petitioner’s submission in this regard was proposed under the broad authority of the Board under 37 C.F.R. § 42.5 to determine the proper course of a proceeding. Patent Owner opposed.
The Board denied Petitioner’s request for authorization to file the motion to supplement, noting that the delay of almost five months since the deposition, and the delay of almost two months from the filing of the Preliminary Response, created a significant burden on the Board to adhere to the statutory deadline under 35 U.S.C. § 314(b). The Board further noted that there is no authority under 37 C.F.R. § 42 to permit supplementation of a petition for inter partes review. Of concern to the Board was that similar testimonial evidence was available and could have been submitted with the petition. In view of these points, the Board did not exercise its discretion to permit the filing of a motion to supplement.
Mentor Graphics Corporation v. Synopsys, Inc., IPR2014-00287
Paper 8: Order
Dated: May 21, 2014
Before: Jennifer S. Bisk, Scott A. Daniels, and Philip J. Hoffmann
Written by: Daniels