Takeaway: The Board may deny a petitioner’s motion to submit supplemental information if the supplemental information would change the evidence on which the petitioner relied upon in making its original challenge to the patent.
In its Decision, the Board denied Petitioner’s Motion to Submit Supplemental Information. The Board had previously instituted inter partes review of claims 3 and 5 of the ‘008 patent based on alleged anticipation by Hirano.
Petitioner’s motion sought to submit Exhibit 1021, the declaration of Dr. Bogy. Dr. Bogy explained the understanding of an ordinary artisan regarding Hirano’s description of how rails of a magnetic head make sliding contact with a recording medium while it is rotating. Patent Owner argued that the Bogy Declaration changes the type of evidence originally relied on in the Petition by attempting to show inherent anticipation of claims 3 and 5, when no testimonial evidence on inherent anticipation of claims 3 and 5 was included with the Petition.
Under 37 C.F.R. § 42.123, a party may file a motion to submit supplemental information if a request for authorization to file such a motion is made within one month of the date the trial is instituted. The Board, however, is not required to grant every motion. The Board stated that Petitioner seeks to change the evidence on which it relied in making its original challenge to claims 3 and 5. The Bogy Declaration, according to the Board, includes new opinions regarding what an ordinary artisan would understand is disclosed by Hirano. Thus, the Board denied Petitioner’s motion.
NISSAN NORTH AMERICA , INC. v. HITACHI AUTOMOTIVE SYSTEMS, LTD., and HYUNDAI MOTOR AMERICA, IPR2014-01548
Paper 37: Decision Denying Petitioner’s Motion to Submit Supplemental Information
Dated: July 15, 2015
Before: Christopher L. Crumbley and Jo-Anne M. Kokoski
Written by: Kokoski