Once a trial has been instituted at the PTAB, a party seeking consideration of supplemental evidence may file a motion in accordance with the following requirements: (1) the request for the authorization to file a motion to submit supplemental information must be made within one month of the date the trial was instituted; and (2) the supplemental information must be relevant to a claim for which the trial was instituted. 37 C.F.R. § 42.123(a). Mere satisfaction of these requirements for filing a motion may not, however, be sufficient to convince the PTAB to grant the motion. Instead, in deciding the motion, the PTAB will use its broad discretion to determine if the proffered supplemental evidence will assist the PTAB in “ensur[ing] efficient administration of the Office and the ability of the Office to complete [trial] proceedings in a timely manner.” See Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015), and our discussions here and here.
In IPR2016-00712, within one month of the PTAB’s decision to institute, , petitioner Mylan Laboratories Limited (“Mylan”) submitted a request to file a motion to submit two exhibits: (1) an amended memorandum opinion authored by a district court judge construing certain limitations of claims of the challenged related U.S. Patent No. 8,927,592; and (2) a final office action from the prosecution history of an application that is a continuation of the application that issued as the ’592 patent. The PTAB granted Mylan’s motion concerning the claim construction opinion but denied Mylan’s motion concerning the final office action.
With respect to the claim construction opinion from the district court, the PTAB noted the opinion was both timely and relevant:
A portion of [the opinion] addresses the same issue we addressed in our Decision regarding whether the preamble phrases, “a method for treating a patient” (claim 1) and “a method of increasing the survival of a patient” (claim 27), are claim limitations or merely statements of intended use. …Just as we should consult the patent specification and the patent’s prosecution history when a patent “has been brought back to the agency for a second review,” we would be remiss in failing to consider a District Court’s analysis of the same patent claim language, specification, and prosecution history under review. While not binding, such a District Court claim construction analysis is a valuable and relevant resource for consideration during an inter partes review proceeding…We further note Judge Shipp’s Opinion issued approximately two weeks after our Decision. Petitioner’s effort to bring the Opinion to our attention was prompt. [Paper 20, pp. 3-4]
The PTAB reached a different conclusion, however, concerning the final office action:
By definition, the claims in the continuation case are different from the claims issued in the ’592 patent. We also note that examination of the claims in the continuation case remains pending and is not yet concluded…Patent Owner has filed Petitioner’s IPR Petition and the supporting Declaration of [petitioner’s expert] from this proceeding in the continuation case in accordance with its duty of candor and good faith in dealing with the Office…Petitioner is attempting to use the Examiner’s view of [petitioner’s expert’s] Declaration, based on a partial record in the still-pending continuation case, weighed against the Rule 132 Declaration submitted by Patent Owner’s expert to Petitioner’s advantage in this trial proceeding…We will not allow Petitioner to use the Examiner’s views in the continuation case as a shadow proceeding to bolster its Petition in the present trial proceeding. . . . [Paper 20, pp. 5-6]
The PTAB’s conclusions highlight some important points for parties to consider when contemplating motions to submit additional information. Motions must be timely filed and the supplemental information must be relevant to a claim for which trial has been instituted. If opinions or conclusions from related proceedings (e.g., litigation or patent application examination proceedings) are proffered, they should represent a final disposition of an issue or proceeding that relates directly to a claim at issue in the IPR. Information from related proceedings that have not yet been completed or that do not directly address a claim at issue in the IPR, even when timely submitted, may not pass the scrutiny of the PTAB.