Denying Motion to File Supplemental Information


Takeaway: Delay in requesting authorization to file supplemental information will work against meeting the burden of showing that allowing the information to be submitted is in the interest-of-justice.

In its Decision, the Board denied Patent Owner’s request for authorization to file a motion to file supplemental information under 37 C.F.R. § 42.123(b). Patent Owner wanted to submit a prior art reference and a declaration of a third-party witness that had been cited in petitions of different IPRs.

The proponent of the supplemental information has the burden of showing that the “supplemental information reasonably could not have been obtained earlier and that consideration of the supplemental information would be in the interests-of-justice.” Patent Owner had the documents as of June 13, 2014, and responded to the Petition in this proceeding on June 20. Patent Owner acknowledged that it had delayed almost three months in requesting the supplemental information, but argued that had just recently been able to review the documents filed with the petitions in the other IPRs to identify the information. The Board determined that the explanation for the delay was not a sufficient showing as to how the interests-of-justice are served.

Petitioner opposed the introduction of the supplemental information because it is too late to substantively respond to it, since its Reply is due September 22, 2014, which was less than one week.

The Board denied the request because although the proposed supplemental information may be relevant to a claim construction position, it is outweighed by the delay in seeking supplementation of the record and the prejudice to Petitioner had the Board allowed the introduction of that information at this stage.

Dell Inc., Hewlett-Packard Co., Netapp, Inc. v. Electronics and Telecommunications Research Institute, IPR2013-00635
Paper 32: Order on Conduct of the Proceeding
Dated: September 19, 2014
Patent: 6,978,346 B2
Before: Miriam L. Quinn and Gregg I. Anderson
Written by: Quinn