CaptionCall, LLC, v. Ultratec, Inc.

Addressing the requirements to offer supplemental evidence and information, the Patent Trial and Appeal Board (PTAB or Board) denied the patent owner’s requests for authorization to file a motion to submit supplemental declarations, making it clear that parties wishing to offer supplemental evidence or information must follow specific rules for doing so. CaptionCall, LLC, v. Ultratec, Inc., Case Nos. IPR2015-00636; -00637 (PTAB, Jan. 6, 2016) (Benoit, APJ).

Petitioner CaptionCall filed petitions for inter partes review (IPR) of two of Ultratec’s patents. After the Board instituted proceedings, the patent owner, Ultratec, filed its patent owner’s response, which included two declarations: one from Ms. Kretschman and one from Mr. Ludwick.

CaptionCall filed and served objections challenging Ms. Kretschman’s qualifications and the basis for her opinions as presented in her declaration. In accordance with 37 C.F.R. § 42.64(b)(2), which requires supplemental evidence to be served within 10 business days of service of the objection, Ultratec served a supplemental declaration by Ms. Kretschman. Ultratec then requested permission to file the supplemental declaration of Ms. Kretschman as supplemental evidence, intending to render unnecessary the filing of a motion by CaptionCall to exclude Ms. Kretschman’s original declaration. CaptionCall argued that filing the supplemental declaration was unnecessary and premature, since § 42.64 already addresses this situation. The Board agreed, further noting that if CaptionCall is not satisfied that its objections have been overcome by Ms. Kretschman’s supplemental declaration, CaptionCall may preserve its objections by filing a motion to exclude under § 42.64(c), and in response, “[Ultratec] may file the supplemental evidence with its Opposition to [CaptionCall]’s Motion to Exclude.”

Ultratec also sought to supplement Mr. Ludwick’s declaration to include a limited explanation of certain background facts and experiences on which he based his opinions and also to respond to the final written decision in CaptionCall, LLC v. Ultratec, Inc., Case No. IPR2014-00780 (PTAB, Dec. 1, 2015). The Board concluded that Mr. Ludwick’s supplemental declaration is not supplemental evidence, as it was not made in response to an objection, but instead would be treated as a late submission of supplemental information, which is governed by § 42.123(b). The late submission of supplemental information required Ultratec to make two showings: why the supplemental information reasonably could not have been obtained earlier, and that the consideration of the supplemental information would be in the interests of justice. CaptionCall argued that Ultratec did not, and cannot, meet these requirements because the information could have been obtained earlier. The Board agreed, noting that Ultratec did not adequately explain the three-week delay between the related CaptionCall final decision and the request to supplement the declaration. The Board also found that Ultratec did not sufficiently show why allowing Mr. Ludwick to supplement his declaration at this late stage of the proceeding is in the interest of justice. For these reasons, the Board did not authorize the patent owner to file a motion to submit a supplemental declaration of Mr. Ludwick.