Takeaway: A motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier.

In its Order, the Board denied Petitioner’s Motion for Late Submission of Supplemental Information. Although the Motion had been timely filed, the Board was not persuaded that the supplemental information sought to be introduced could not have been submitted earlier.

Petitioner had cited the House reference as Exhibit 1011 in its Petition. The originally filed House reference was said to have “poor quality images” and, according to the Board, included “seeming discrepancies in the dates on the pages of Exhibit 1011[.]” Patent Owner had questioned these dates in its Preliminary Response.

The Board issued its Decision to Institute on December 15, 2015. In order to address the Board’s comments in the Decision to Institute, “Petitioner attempted to locate the author, Peter House [and on] December 23, 2015, Petitioner reached Mr. House, who suggested Petitioner contact the publisher, Circuit Cellar Ink, directly.” By its Motion, Petitioner had sought to submit a declaration in Exhibit 1019 attesting to the publication date of the House reference (along with a copy of the House reference that did not include “artifacts of the duplication processes as allegedly published by publisher Circuit Cellar Ink in April 1995”). It was Petitioner’s position that “the proposed supplemental information . . . was only available in early February 2016 after reaching out to Mr. House on December 23, 2015.

Patent Owner had opposed Petitioner’s Motion, asserting that: (1) Petitioner should have noticed and addressed the issues in question “eight months ago before it filed its Petition[;]” (2) Petitioner should also have noticed and addressed these issues “over five months ago” in response to the objections by Patent Owner in its Preliminary Response; and (3) “Petitioner was not under severe time constraints, relative to the one year time bar of 35 U.S.C. § 315(b), in preparing its Petition because the Petition was filed less than two months after Patent Owner filed a lawsuit against Petitioner.”

The Board addressed both parties’ positions in view of 37 C.F.R. § 42.123(b). Among other things, this rule requires that a “motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier[.]” The Board was “not persuaded by Petitioner’s arguments that the proposed supplemental information (Ex. 1019) could not have been obtained earlier[,]” finding that “Petitioner should have appreciated the poor quality images of the originally filed House reference[;]” that Petitioner should have “sought to remedy the situation much earlier in this proceeding[;]” that Petitioner should not have waited until after the Decision to Institute to remedy the apparent issues; and that “Petitioner could have pursued a remedy before filing its Petition or at least shortly after Patent Owner raised a question regarding the dates on the pages of the House reference in its Preliminary Response.” The Board denied Petitioner’s Motion for Late Submission of Supplemental Information in view of the aforementioned reasons.

Crestron Electronics, Inc. v. Intuitive Building Controls, Inc., IPR2015-01379

Paper 34: Order on Conduct of Proceeding

Dated: March 2, 2016

Patent: 5,945,993

Before: Ken B. Barrett, Michael W. Kim, and Daniel N. Fishman

Written by: Fishman