By Carl Kukkonen

On February 28, 2022, in American Well Corporation v. Teladoc Health, Inc. IPR2021-00748, the PTAB denied a motion to submit supplemental information.  In this matter, the Board instituted a trial of all claims and all requested grounds.  In the Institution Decision, the Board stated that the petition failed to be persuasive as to providing a reasonable likelihood of prevailing with respect to some of the asserted claims and grounds.  Responsive to these statements by the board, the Petitioner American Well Corporation requested and was authorized to submit supplemental information, namely a supplemental expert declaration.

Here, the Petitioner contended that the supplemental expert declaration addressed errors and omissions that the Board itself identified in its Institution Decision as bearing on the patentability certain claims.  In response, the Patent Owner argued that the Petitioner attempted to change, not supplement, its arguments and evidence in order to correct the identified deficiencies in the petition that the Petitioner could and should have addressed at the time the petition was filed.  The Patent Owner also argued that changing the arguments and evidence by way of the supplemental expert declaration would both prejudice the Patent Owner and would violate the statutory particularity requirement of 35 USC § 312(a)(3).

In considering the motion, the Board acknowledged that it has allowed the submission of supplemental information where the information did not change the grounds of patentability authorized in the proceeding, and did not change the evidence initially presented in the petition in support of those grounds.  The Board also noted that it has denied petitions where the petitioner sought to use the supplemental information to refine or bolster challenges originally presented in the petition, based on information in the preliminary response or institution decision.

In rejecting the supplemental expert declaration, the Board agreed with the Patent Owner’s position that the declaration introduced new citations and conclusions by the expert that supplant, not supplement, the original motivation-to-combine argument in the petition which were specifically tailored to address the deficiencies identified by the Board.  Further, the Board concluded that without the proffered supplemental declaration, the Petitioner did not provide any rationale at all for combining the references.  In sum, the Board rejected the proposed supplemental declaration as changing Petitioner’s original petition and such errors and omissions could have been identified prior to filing the petition.

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An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.