In a bit of “inside baseball,” the PTAB recently clarified the difference between supplemental evidence and supplemental information. Practitioners would do well to give careful attention to this distinction. The difference can have profound consequences to an IPR Petitioner.

In Generico LLC v. Dr. Falk Pharma GmbH, IPR2016-00297, Paper No. 15 (July 15, 2016), the PTAB entered an order regarding the conduct of proceedings. The order addressed the Petitioner’s request to file a motion to supplement information pursuant to 37 C.F.R. §42.123. The Petitioner sought to file information in response to objections the Patent Owner made to evidence submitted by Petitioner. Specifically, the Patent Owner had objected that Petitioner’s prior art references would not have been relied upon by a person of ordinary skill in the art, and that the Petitioner’s declarant was not qualified to speak to the views of a person of ordinary skill in the art. To address these objections, the Petitioner sought the PTAB’s authorization to file a supplemental declaration and documents from a parallel district court litigation.

Mercifully, the PTAB counseled the Petitioner that it need not proceed pursuant to Section 42.123, which erects a high hurdle to the introduction of supplemental information. Under Section 42.123, a motion to submit supplemental information must ordinarily be brought within one month of the decision to institute the IPR, and it must establish that the information is relevant to a claim for which trial has been instituted. A party seeking to submit supplemental information outside of this one month window must further establish that the supplemental information reasonably could not have been obtained earlier, and that consideration of the information would be “in the interests of justice.” In Generico, the Petitioner would have been required to meet this higher burden due to the lateness of its request.

Instead, the PTAB advised the Petitioner that it could proceed pursuant to 37 C.F.R. §42.64(b)(2), which provides a ten-day time period to serve supplemental evidence in response to an objection. The PTAB explained that to preserve its objections, the Patent Owner was obligated to file a motion to exclude pursuant to Section 42.64(c). Upon filing of such a motion, the Petitioner would then be entitled to file an opposition accompanied by any supplemental evidence that had previously been served under Section 42.64(b)(2). See Generico, id. at 2.

In addition, the PTAB noted that if the Patent Owner proceeded in its Patent Owner response to address its objection to the declaration, the Petitioner would, as a matter of right, be entitled to file a Reply to that response, and to include in that Reply a supplemental or further declaration, as well as other evidence responsive to issues raised by the Patent Owner. See Generico, id. at 2-3 (citing Activision Blizzard, Inc. v. Acceleration Bay, LLC, Case IPR2015-01951, Paper 16 at 6–7 (PTAB May 4, 2016), 37 C.F.R. § 42.23(b), and Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (U.S. Patent & Trademark Office Aug. 14, 2012)).

The panel explained that supplemental information pursuant to 37 C.F.R. § 42.123 is information that Petitioner intends to rely upon as part of its case-in-chief to support an argument on the merits. . . . [A] motion to file supplemental information would need to explain why the information was not included with the Petition.

The PTAB helpfully advised the Petitioner that in neither instance was prior authorization from the Board required. The PTAB explained that in contrast to supplemental evidence designed to respond to a Patent Owner’s evidentiary objections, supplemental information under Section 42.123 was “information that Petitioner intends to rely upon as part of its case-in-chief to support an argument on the merits.” As such, the Petitioner assumes a greater burden when seeking belated introduction of such information. See Generico, id. at 3 (citing Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435 (Fed. Cir. 2015)). [discussed in prior blog post here.] Taking the hint, the Petitioner withdrew its request to file supplemental information pursuant to Section 42.123.

Invoking the proper procedure can mean the difference between success and failure. The Petitioner in Generico was fortunate to have such a solicitous panel, intent upon schooling Petitioner for its own good. Petitioners ought not to assume that all PTAB panels will prove as obliging.