In its Order, the Board denied Petitioner’s request for authorization to file a Motion to Submit Supplemental Information “to present additional grounds of unpatentability.” Petitioner requested authorization to submit Patent Owner’s infringement contentions (Ex. 1009) from a related district court litigation, plus three additional prior art references (Exs. 1010-1012). The Board explained that submitting supplemental information under 37 C.F.R. § 42.123(a) as a vehicle to respond to a possible position that another party may take in the future is improper. Moreover, Petitioner may not raise a new ground of patentability after institution of a trial, even assuming the Patent Owner offers its own claim construction, and patentability contentions based on that construction, in a Patent Owner Response. Thus, the Board denied Petitioner’s request for authorization to file a Motion to Submit Supplemental Information, and indicated that it would expunge Exhibits 1009-1012 from the record.
The Board also indicated that it did not authorize any motion by Patent Owner to seal regarding documents under seal in parallel district court litigation. Instead, the parties may request a conference call with the Board in relation to a motion to seal and proposed protective order, assuming the need arises.
Medtronic, Inc. and Medtronic Vascular, Inc. v. Endotach LLC, IPR 2014-00100
Paper 18: Order Denying Petitioner’s Request for Authorization to file Motion to Submit Supplemental Information, and Ordering Expunging of Certain Exhibits; etc.
Dated: April 21, 2014
Patent 5,593,417
Before: Jacqueline Wright Bonilla, Michael J. Fitzpatrick, and Hyun J. Jung
Written by: Bonilla