Takeaway: A declaration attesting to the accuracy of a translation of foreign prior art submitted as supplemental information is permissible if the request to submit supplemental information is made within one month of the date of trial institution, the information is relevant to the patentability of the claims, and it does not change the evidence initially presented in the petition.
In its Decision, the Board granted Petitioner’s unopposed motion to submit two declarations attesting to the accuracy of the English translation of a Japanese Patent Application to Kawakami as supplemental information. As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief.
Under 37 C.F.R. § 42.123(a), a party may file a motion to submit supplemental information if the following requirements are met: (1) a request for authorization to file such motion is made within one month of the date the trial was instituted; and (2) the supplemental information must be relevant to a claim for which trial has been instituted.
Here, Petitioner “sought authorization to file its motion via correspondence dated May 6, 2016, which is within one month of the institution date in this proceeding of April 8, 2016.” Further, the supplemental information Petitioner seeks to submit “is relevant to the patentability of claims 6, 10, 15, 21, and 22, on which trial has been instituted under § 103(a) in view of Moriarty, Phares, Kawakami, and Eğe.” Specifically, the declarations “allegedly confirm that Ex. 1007 is an accurate translation of Kawakami, and are, therefore, relevant to the patentability of claims 6, 10, 15, 21, and 22 in view of Moriarty, Phares, Kawakami, and Eğe.” The Board was also persuaded that Petitioner met its burden because the supplemental information “does not change the grounds of unpatentability authorized in this proceeding, nor does it change the evidence initially presented in the Petition to support those grounds of unpatentability.” Thus, the Motion was granted.
Steadymed Ltd. v. United Therapeutics Corp., IPR2016-00006
Paper 25: Decision on Petitioner’s Motion for Supplemental Information
Dated: May 11, 2016
Patent: 8,497,393 B2
Before: Lora M. Green, Joni Y. Chang, and Jacqueline T. Harlow
Written by: Harlow