The PTAB has authority to deny a motion for supplemental information even if the motion meets the requirements for submitting supplemental information

Redline Detection, LLC v. Star Envirotech, Inc., No. 2015-1047 (Fed. Cir. Dec. 31, 2015)

Within a month of the IPR’s institution, the petitioner filed a motion to submit supplemental information under 37 C.F.R. § 42.123(a). The supplemental information included a 60-page expert declaration. The original petition did not rely on an expert declaration, and the petitioner’s only justification for submitting the expert declaration as supplemental information was that the delayed submission was cost effective. The PTAB denied the motion and expunged the supplemental information from the record. The petitioner appealed the denial of the motion to submit supplemental information, and the Federal Circuit affirmed.

The petitioner argued that the PTAB must accept supplemental information submissions that meet the criteria under 37 C.F.R. § 42.123(a) and that the PTAB cannot impose other criteria for the submission of supplemental information. The Federal Circuit rejected this argument. The court held that the PTAB’s interpretation of its regulation to permit consideration of other factors before accepting supplemental information was not plainly erroneous. Indeed, requiring the PTAB to accept all supplemental submissions that were timely made even if relevant would cut against the PTAB’s mandate to ensure efficient administration of IPR proceedings. Thus, when the supplemental submission reasonably could have been filed with the original petition, the PTAB has discretion to reject a timely filed motion.

A copy of the opinion can be found here ►