FLIR Systems, Inc. v. Leak Surveys, Inc.

Addressing whether prior-art-related submissions by a petitioner in an inter partes review (IPR) proceeding are supplemental information under 37 C.F.R. 42.123(a) or supplemental evidence under 37 C.F.R. 42.64(b)(2), the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) found that a prior-art-related submission is supplemental evidence, not supplemental information, if the submission is known to the patent owner, can be addressed on the merits by the patent owner and potentially can be excluded from evidence with a successful motion to exclude.  FLIR Systems, Inc. v. Leak Surveys, Inc., Case Nos. IPR2014-00411; -00434 (PTAB, Oct. 7, 2014) (McKelvey, APJ).

Leak Surveys’ patent, directed to a chemical leak inspection system, was subject to an IPR petition by FLIR alleging that the claimed subject matter was invalid as anticipated and/or obvious.  After filing its IPR petition, FLIR requested it be permitted to submit, as supplemental information under 37 C.F.R. 42.123(a), three declarations and additional documents related to certain exhibits already in evidence.  The admissibility of those exhibits was subject to objection by the patent owner.

In resolving the dispute, the PTAB explained that the supplemental evidence rule, 37 C.F.R. 42.64(b)(2), provided the better process for the petitioner to file the three declarations and the additional documents.  The PTAB noted that the supplemental evidence provision stated that “the party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection”—and was directly relevant to the situation at bar because the petitioner relied on evidence to which the patent owner objected, and the petitioner wished to file supplemental data supporting the admissibility of the evidence.

The PTAB noted that “Petitioner is not prejudiced by our determination because the supplemental evidence will be before us.  Patent Owner is not prejudiced because it will have an early opportunity to cross-examine and address the merits in its Patent Owner’s Response and admissibility in a motion to exclude.”