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 →

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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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 →

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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