Takeaway: A motion to submit supplemental information will likely be granted if the supplemental information is directly related to an argument advanced in the proceeding and the opposing party will still have an opportunity to respond to the supplemental information.
In its Decision, the Board granted Patent Owner’s Motion to Submit Supplemental Information. Specifically, Patent Owner sought to submit two supplemental documents, a pair of emails with attachments containing statements related to the reliability of spectrophotometric analysis for determining the presence of astaxanthin.
The Board stated that a motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier and that the consideration of the supplemental information would be in the interests of justice. Patent Owner stated that the information could not have been reasonably obtained earlier because the two documents were part of a production consisting of over 100,000 pages, and that consideration of the supplemental information would be in the interests of justices because the information contains Petitioner’s own statements concerning issues under consideration in this proceeding. Petitioner argued that the documents were produced to Patent Owner several months before the Patent Owner’s Response and that Petitioner will suffer prejudice if the documents are considered because Petitioner has less time to prepare for the deposition of Patent Owner’s witness and to locate and prepare a rebuttal expert.
The Board found that the interests of justice are served by allowing entry of the supplemental information because the documents are Petitioner’s own statements that relate directly to an argument that Patent Owner has advanced in its Response. Further, the Board deemed any prejudice to Petitioner as negligible because Petitioner can cross-examine Patent Owner’s witness about the documents and may introduce direct testimonial evidence with its Reply that is responsive to the supplemental information.
Cyanotech Corp. v. The Board of Trustees of the University of Illinois, IPR2013-00401
Paper 41: Decision on Patent Owner’s Motion to Submit Supplemental Information
Dated: May 9, 2014
Before: Scott E. Kamholz, Sheridan K. Snedden, and Georgianna W. Braden
Written by: Snedden