Denying Leave to File Supplemental Information IPR2014-01113


Takeaway: A request to file supplemental information, such as inventor’s testimony in a related proceeding regarding claim construction, was not granted because what the inventor believes the claim terms mean is mostly irrelevant in claim construction in inter partes review proceedings.

In its Order, the Board denied Petitioner’s request to file supplemental information. Following the Patent Owner Preliminary Response, Petitioner requested to file deposition excerpts, from related district court litigation, of one of Patent Owner’s named inventors in the ’028 patent.  Petitioner argued that the testimony included meanings of certain claim terms that were inconsistent with the meanings taken by Patent Owner in its Preliminary Response.

First, the Board noted that such a supplemental filing would act as a reply to Patent Owner’s Preliminary Response, which is not authorized in these proceedings. The Board could use its discretion under 37 C.F.R. § 42.5(a) to grant the motion, but was not persuaded to do so in this case for at least the following reasons.

Claim construction depends on the understanding of one of ordinary skill in the art in light of the specification, and not on what an inventor himself thinks of the meaning of the claim term. The inventor was discussing a related term, and not the exact terms in question in the Preliminary Response.  Petitioner requested merely to submit the deposition excerpts without any explanation of context, which would not be helpful to the Board.

Wireless Seismic, Inc. v Fairfield Industries, Inc., IPR2014-01113
Paper 8: Order on Conduct of the Proceeding

Dated: October 28, 2014

Patent: 7,124,028 B2

Before: Jameson Lee, Jo-Anne M. Kokoski, and Kristina M. Kalan
Written by: Lee