By Albert Liou and Daniella Paredes –
In Nanobebe US Inc. v. Mayborn (UK) Limited et al., the PTAB denied a Petitioner’s Motion to submit supplemental information, even though Petitioner argued the information had been inadvertently omitted in the original petition. The PTAB denied the Motion because it “effectively change[d] the argument and evidence originally relied upon in the petition.” IPR2023-00465, Paper 21, at 4 (August 17, 2023). In its Motion, the Petitioner sought to submit analysis of claim 23 related to a baby bottle under Ground 1 with respect to a certain “Ishimaru” reference. The Petitioner stated that the omission of this analysis from the Ground 1 arguments in the petition was inadvertent. Id. at 3, 5. As evidence of the Petitioner’s intent to include the analysis in the petition, the Petitioner pointed to the table of contents in the Declaration showing a placeholder for the claim 23 under Ground 1 but stated “Error! Bookmark not defined.” Id. at 4–5. See Ex. 1005, 4 (Table of Contents). The Petitioner also showed that both the Petition and Declaration referenced the omitted claim 23 in Ground 2, suggesting its exclusion from Ground 1 was inadvertent. Paper 21 at 5. The Patent Owner opposed the request, asserting that the supplemental information went beyond mere supplementation because it included a new substantive argument for a claim in Ground 1 that did not exist in the Petition. Id. at 3.
Under 37 C.F.R. § 42.123(a), a motion to submit supplement information may be filed after a trial has been instituted when: “(1) a request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted (2) the supplemental information must be relevant to a claim for which the trial has been instituted.” 37 C.F.R. § 42.123(a)(1)–(2). The PTAB found that while the Petitioner met both requirements under § 42.123(a) to file the Motion, the request should be denied. Paper 21 at 3. The PTAB explained that the regulations require the Petition to identify and state with particularity the evidence supporting each challenged claim, and entry of the supplemental information would effectively change the argument and evidence relied on in the original petition. Id.
The PTAB noted that the Petitioner failed to cite any rule or precedent that permitted correction of an omission in a petition by introducing a new analysis through supplemental information. Id. at 5. The PTAB found that the mere reference of the omitted claim in Ground 2 was insufficient for entry because the analysis of the omitted claim was absent. Id. Lastly, the PTAB noted that the Petitioner did not provide an explanation as to why the supplemental information was not or could not have been presented earlier. Id.
Takeaway: PTAB practitioners should ensure all claim analysis is properly included in both the initial Petition and Declaration before filing, as changes to the arguments and evidence generally cannot be made through a submission of supplemental information.