National Environmental Products Ltd. v. Dri-Steem Corp.; PNC Bank National Ass’n v. Secure Axcess, LLC

In two recent decisions demonstrating that amending a petition for inter partes review (IPR) with supplemental information can be difficult, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) denied attempts to amend petitions, finding that amendments to petitions are limited to correcting clerical or typographical mistakes.  National Environmental Products Ltd. v. Dri-Steem Corp., Case No. IPR2014-01503 (PTAB, Nov. 4, 2014) (Kalan, APJ.); PNC Bank National Ass’n v. Secure Axcess, LLC, Case No. CBM2014-001000 (PTAB, Nov. 5, 2014) (Ward, APJ.).

In the National Environmental decision, the petitioner filed a petition for IPR, challenging a patent owned by Dri-Steem.  National subsequently submitted a supplemental filing requesting supplementation of its petition with a “recently discovered prior art patent” on which it intended to rely.  After a conference call with the parties the Board concluded the supplemental filing should not be allowed.

The Board explained that the petitioner was effectively seeking authorization to substantively amend its petition and that amendments are typically limited to correcting clerical or typographical mistakes.  The Board was unpersuaded that the petitioner should be authorized to submit supplemental information to bulk up its petition.

The Board noted that petitioner’s supplemental filing was filed without first obtaining Board authorization, which is required before motions can be entered.  The Board also noted that the applicable law requires that the petition include all of the asserted grounds of unpatentability at the time of filing.  Although the prior art patent was known to the petitioner at the time of filing, and the petitioner was identified on the face of the supplemental prior art patent, the petitioner was nonetheless unable to explain sufficiently during the call why the information was not included in its original petition. Accordingly, the Board denied National’s request to file an amended petition.

In the PNC Bank decision, the petitioner filed a petition for IPR challenging a patent owned by Secure Axcess.  PNC Bank subsequently requested a conference call to discuss a request for authorization to submit supplemental information to the petition and thereby enter at least five new references into the record.  The Board informed the petitioner that motions to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier and that consideration of the supplemental information would be in the interests-of-justice.

The petitioner explained that the new references were discovered as a result of a change in prior art search strategy.  While acknowledging that each of the new references was publically available prior to filing its petition, petitioner explained that it would only have discovered the references had it used the alternate search strategy.  The Board was not persuaded by PNC Bank’s explanation and concluded that the petitioner could not sufficiently establish why the supplemental information could not have been obtained earlier, or why consideration of the supplemental information would be in the interests of justice.  Accordingly, the Board denied PNC Bank’s request to amend the petition.