By Christian Damon and John Marlott

By rule, a petitioner may request permission from the Board to submit supplemental information in an IPR proceeding if: (1) the request is filed within one month of the Board’s institution decision, and (2) the supplemental information is “relevant to a [patent] claim for which the trial has been instituted.”  37 C.F.R. § 42.123(a).  As the Board recently demonstrated, however, a petitioner’s request for consideration of supplemental information may be denied even if both of these requirements are satisfied.  The Board’s decision underscores the critical importance of including in an IPR petition the entirety of an invalidity argument and any supporting evidence.

In IPR2017-00028, the petitioner moved—less than one month after institution—to submit certain supplemental information.  IPR2017-00028, Paper 22 at 3 (June 13, 2017).  Specifically, the petitioner sought to submit five additional exhibits, each related to a French book chapter.  Id. at 2.  The additional exhibits included an English translation of the book chapter, a supplemental declaration of the petitioner’s expert explaining the relevance of the chapter, and two journal articles showing that the book chapter was publicly accessible prior to the filing date of the challenged patent.  Id.

The Board acknowledged in its analysis that the petitioner’s request to submit supplemental information was timely, and also that “the information appears to be relevant to a claim upon which [the Board] instituted trial.”  The Board pointed out, though, that § 42.123(a) “does not require [the Board] to accept all supplemental information if timely submitted and relevant.” Id. at 2 (citing Redline Detection, LLC v. Star Environtech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015)).  Noting its discretion “to grant or deny motions as it sees fit,” the Board denied the petitioner’s request in this case.  Id. at 3.

The Board gave two reasons for its denial.  First, the Board explained that § 42.123(a) “is not intended to offer a petitioner a routine avenue for bolstering deficiencies in a petition raised by a patent owner in a preliminary response.” Id. at 4 (citing Boeing Co. v. Levine, IPR2015-01341 (PTAB April 15, 2016) (Paper 30)).  Here, the Board concluded that the petitioner was seeking to do just that: to bolster its petition by introducing new teachings from the prior art French book chapter in response to arguments made by the patent owner in its preliminary response.  Id. at 3-4.  The Board explained that the supplemental information rule is not intended to allow petitioners to strategically withhold certain evidence to “wait-and-see” what arguments a patent owner makes in its preliminary response, and then rely on § 42.123(a) to supplement the petition.  Id. at 4.

Second, the Board highlighted that the petitioner had not explained why it could not have presented the supplemental information in its petition. Id. at 4.  Despite petitioner’s arguments that it only recently discovered the book chapter, the Board cited evidence that this was not an “obscure reference,” and the Board was “not persuaded that Petitioner could not have discovered [the book chapter] upon a diligent search prior to filing its original Petition.” Id. at 5.

Takeaway.  An IPR petitioner must be diligent about presenting complete and comprehensive invalidity arguments in its petition, and should take care to include all supporting prior art evidence with the petition itself.  If prior art evidence or information is left out of the petition, there is no guarantee that the Board will permit the petitioner to submit that supplemental material after the IPR has been instituted—even if the supplemental information is timely provided, and even if that additional information is acknowledged to be relevant to a claim upon which the Board has instituted trial.

Laboratoire Francais du Fractionnement et des Biotechnologies S.A. v. Novo Nordisk Healthcare AG, IPR2017-00028 (June 13, 2017) (Paper 22).

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John Marlott brings more than 30 years of intellectual property law experience to his role as lead counsel in IP disputes for Jones Day clients. He focuses on high-stakes district court and ITC patent litigation, post-grant patent proceedings before the PTAB, and appeals to the U.S. Court of Appeals for the Federal Circuit.

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