Takeaway:  Unlike the case under 37 C.F.R. § 42.123(b), Petitioner need not show under 37 C.F.R. § 42.123(a) why the supplemental information reasonably could not have been obtained earlier.

In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information under 37 C.F.R. § 42.123 (a).  Consequently, Petition was authorized to file Exhibits 1057–1065 in IPR2015-00811 and IPR2015-00871 and was authorized to file Exhibits 1060–1065 in IPR2015-00810, IPR2015-00812, IPR2015-00866, IPR2015-00868, and IPR2015-00870.

Petitioner had filed a Motion to Submit Supplemental Information including the above-referenced Exhibits, which Patent Owner had opposed.   Petitioner had contended that Exhibits  1057-1059 were relevant to the issue of whether a first relied-upon reference, Aventail Connect, was publicly available; and contended that Exhibits 1060–1065 were relevant to the issue of whether a second relied-upon reference, RFC 2401, was publicly available.

As for Exhibits  1057-1059 (the “Aventail Exhibits”), certain other Exhibits 1022, 1023, and 1043 relating to the public availability of Aventail were filed with the Petition and described in the Declaration of Mr. Chris Hopen.  Patent Owner then objected to Exhibits 1022, 1023, and 1043, after which Petitioner sought to have the Aventail Exhibits entered as supplemental evidence under 37 C.F.R. § 42.64(b)(2) in order to corroborate the reliability of Exhibits 1022, 1023, and 1043.  Patent Owner then argued that the Aventail Exhibits, which amount to almost 900 pages, were prejudicial; that Petitioner was in possession of this information earlier and thus must have knowingly withheld it; that this “intentional delay” cut against the Board’s ability to timely complete the proceeding; and that all of the Aventail Exhibits should have been submitted along with the Petition.

The Board began its analysis by noting that the serving of exhibits as supplemental evidence does not prevent such exhibits from being supplemental information as well.  Citing Valeo North Am., Inc. v. Magna Elects., Inc., IPR2014-01204, the Board noted that “Nothing in the Board’s rules prohibits a party from filing, as supplemental information, evidence which also is responsive to evidentiary objections.”

The Board was not persuaded by Patent Owner’s “intentional delay” argument because Patent Owner had not provided any evidence or authority in support of this position.  Instead, the Board noted that unlike the case under 37 C.F.R. § 42.123(b), Petitioner need not show under 37 C.F.R. § 42.123(a) why the supplemental information reasonably could not have been obtained earlier.  Thus, the Board agreed with Petitioner that “it is not relevant to the analysis under 37 C.F.R. § 42.123(a) that the supplemental information ‘could not have been obtained earlier.’”  The Board then went on to note that it was not persuaded that allowing entry of the supplemental information would cause undue prejudice to Patent Owner, and that consideration of the supplemental information would not “change the grounds of unpatentability” and would not “likely interfere with the speed or efficiency of trial.”

Regarding Exhibits  1060-1065 (the “RFC 2401 Exhibits”), the Board stated that “Petitioner does not make any argument beyond those made above in connection with Exhibits 1057–1059” and that “Patent Owner makes no argument specific to Exhibits 1060–1065.”  Thus, as with the Aventail Exhibits, the Board decided that Petitioner may submit the RFC 2401 Exhibits as supplemental information.

Apple Inc. v. VirnetX Inc., IPR2015-00810, IPR2015-00811, IPR2015-00812, IPR2015-00866, IPR2015-00868, IPR2015-00870, IPR2015-00871
Paper 21: Decision on Motion to Submit Supplemental Information
Dated: November 2, 2015
Patents: 8,868,705 B2, 8,850,009 B2, 8,458,342 B2, 8,516,131 B2, 8,560,705 B2
Before:  Karl D. Easthom, Jennifer S. Bisk, and Gregg I. Anderson
Written by: Anderson