By: Sean Benevento[1], Mike Lavine, and Matt Johnson

After IPR institution, a party may file a motion to submit supplemental information so long as (1) the party requests authorization to file the motion within a month of the date the trial was instituted, and (2) the information is relevant to a claim for which trial was instituted. See 37 C.F.R. § 42.123(a) (2012). However, in addition to these requirements, the Patent Trial and Appeal Board (PTAB) will also consider whether granting the motion promotes efficiency. See RPX Corp. v. IYM Techs. LLC, No. IPR2017-01888 (P.T.A.B. May 14, 2018) (Paper No. 9).

In RPX Corp., the PTAB instituted an IPR based on grounds that relied primarily on a 1992 paper published by the Institute of Electrical and Electronics Engineers (IEEE). See id. at 5-6, 31.  Before filing the IPR petition, Petitioners had asked the IEEE to issue a declaration attesting to the authenticity and public availability of the paper, but did not receive the declaration until after the petition was filed. See RPX Corp., No. IPR2017-01888, Paper 9 at 3. After trial was instituted, the Petitioners moved to file the declaration “as further evidence of the authenticity and public availability” of the 1992 paper.  Id. at 2.

There was no question that the Petitioner made its request for authorization to file the declaration within a month of institution. See id. at 2, 3.  The PTAB held that the IEEE declaration was relevant to the claims for which trial was instituted because it concerns the public availability and authenticity of the 1992 paper, which served as the basis for the instituted grounds. See id. at 3.

Although the Petitioners satisfied both elements of 37 C.F.R. § 42.123(a), the PTAB held that it must also consider whether granting the motion is consistent with the “guiding principle” of decision-making announced by the Federal Circuit: ensuring the efficiency of the Patent Office and completing IPR proceedings in a timely manner. Id. at 2 (quoting Redline Detection LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015)). Because the IEEE declaration was relevant and was submitted promptly, the PTAB held that granting the motion complied with the overarching goal of efficiency. See id. at 4.

Takeaway: Even if a motion to submit supplemental information meets both elements of 37 C.F.R. § 42.123(a), the PTAB will also consider the efficiency of granting the motion.  Although in RPX Corp. the Petitioners’ mere compliance with 37 C.F.R. § 42.123(a) comported with the PTAB’s guiding principles of efficiency, that may not hold true in all cases, so parties moving to file supplemental information should be prepared to make additional arguments as to how that information would ensure efficiency in the PTAB proceeding.

[1] Sean Benevento is a Jones Day Summer Associate.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 225 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.