Takeaway: While parties have a duty of candor and good faith under 37 C.F.R. § 42.11 in inter partes review and other PTAB proceedings, there is no procedure in such proceedings for submitting an information disclosure statement; other mechanisms may be employed for bringing newly discovered prior art to the Board’s attention.
In its Summary, the Board referred to a teleconference with the parties during which Patent Owner had advised that it had become aware of additional prior art cited in a corresponding European patent application. Because there is no procedure in an inter partes review for submitting prior art via an information disclosure statement, Patent Owner asked the Board for its recommendation on what Patent Owner needed to do in order to comply with its duty of candor and good faith under 37 C.F.R. § 42.11.
Taking into account a variety of factors, the Board did not authorize the submission of the newly-discovered prior art as supplemental information in the inter partes review proceeding. Reasons presented by the Board in support of this decision included: briefing in this proceeding had already been completed; oral hearing was scheduled less than one month away (on June 17, 2014); neither party had sought authorization to file a motion under 37 C.F.R. § 42.123(c) requesting that the new prior art be considered as supplemental information; the newly-discovered prior art was not relevant to any claim for which this trial had been instituted; and at this stage, neither party would have an adequate opportunity to address the newly-discovered prior art. Thus, the Board indicated that no basis existed for concluding that consideration of the supplemental information would be practical or in the interests of justice under 37 C.F.R. § 42.123(c).
PCT International, Inc. v. Amphenol Corporation, IPR2013-00229
Paper 27: Summary of Conference Concerning Newly Discovered Prior Art
Dated: May 21, 2014
Before: Brian J. McNamara, James B. Arpin, and Miriam L. Quinn
Written by: McNamara