A PTAB panel has granted a patent owner’s (owner) motion to submit supplemental information in an inter partesreview (IPR). A motion to submit supplemental information in an IPR proceeding must show why the information reasonably could not have been obtained earlier and that consideration of the supplemental information would be in the interests of justice. 37 C.F.R. § 42.123(b). Here, the owner sought to submit two supplemental documents — a pair of emails with attachments — that contained statements by the petitioner suggesting that certain scientific testing results were unreliable. In opposing the motion, the petitioner argued that the “documents in question had been produced to [the owner] several months before [the owner] filed its Response, and that [the owner’s] failure to submit them with the Response is no more than attorney negligence.” The Board ultimately determined that the interests of justice would be served by allowing entry of the supplemental information. In reaching its decision, the Board explained that “[the] documents are Petitioner’s own statements and relate directly to an argument Patent Owner has advanced in its Response.” In addition, the Board determined that the petitioner would not be prejudiced because the “petitioner will have an opportunity to cross-examine [the owner’s] witness about the supplemental documents and may introduce direct testimonial evidence with its Reply that is responsive to the supplemental documents.”

Cyanotech Corp. v. Board of Trustees of Univ. of Illinois, IPR2013-00401 (PTAB May 9, 2014) [Kamholz, Snedden (opinion), Braden]