Pacific Market International, LLC v. Ignite USA, LLC

Addressing a motion to submit supplemental information after institution, the U.S. Patent and Trademark Office’s  Patent Trial and Appeal Board (PTAB or Board) granted the motion, finding that the information—a supplemental declaration directed to reasons to combine particular prior art references—did not change any grounds of unpatentability and would not unfairly prejudice the patent owner.   Pacific Market International, LLC v. Ignite USA, LLC, IPR No. IPR2014-00561 (PTAB, Dec. 2, 2014) (Cocks, APJ).

The Board stated that, pursuant to 37 C.F.R. § 42.123, a petitioner may request authorization to file a motion to submit supplemental information in connection with a petition if certain requirements are met:  the request must be filed within one month of the date the trial has been instituted and the supplemental information must be relevant to a claim for which trial has been instituted.  The Board noted that meeting those threshold requirements does not necessarily mean that the Board will allow the motion.  While the order does not set forth a specific test to determine whether such a motion will be granted, the Board commented that the “the provision for submitting supplemental information is not intended to offer a petition a routine avenue for bolstering deficiencies in a petition raised by a patent owner in a Preliminary Response” and that petitioners should not expect the provision to provide a “wait-and-see” opportunity to supplement its petition.  On the other hand, the Board suggested that information that may prove beneficial to the Board in reaching a decision may be permitted, so long as the patent owner has sufficient time to address the new information and is not unfairly prejudiced.

In this instance, petitioner Pacific Market International (PMI) moved to submit a supplemental declaration of an expert directed to reasons to combine the particular prior art references that formed the underlying basis for institution the trial.  PMI characterized it as simply “additional evidence”—it did not change any grounds of patentability originally set forth in the petition.  The patent owner, Ignite, suggested that the supplemental testimony was more appropriate for a reply brief, but the Board disagreed.  Noting that allowing the declaration now increases the likelihood that the record would be developed more fully earlier and potentially avoid additional motion practice later in the proceeding, the Board allowed the filing.  In particular, the Board noted that since the request was made within a month after trial had been instituted it was filed promptly, the patent owner would have a fully opportunity to cross-examine the witness about the new testimony, and the patent owner would also have the opportunity to submit testimony of its own witness to respond to the supplemental declaration.