Takeaway: The Board will not allow a party to file supplemental evidence outside of the procedure outlined in 37 C.F.R. § 42.64.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to submit supplemental declarations. Patent Owner requested authorization to file a motion to submit two supplemental declarations, a Kretschman declaration and a Ludwick declaration.

Regarding the Kretschman declaration, Patent Owner explained that the proposed supplement was in response to objections filed and served by Petitioner challenging Kretschman’s qualifications and bases for her opinions. Patent Owner timely served the supplemental declaration within ten days of the objection, and wanted to render unnecessary a motion to exclude the original declaration. Petitioner argued that filing the supplemental declaration was unnecessary at this time because 37 C.F.R. § 42.64 addresses this situation. The Board agreed with Petitioner that the request to file the supplemental declaration was premature.

Patent Owner sought to supplement Ludwick’s declaration to include a limited explanation to certain specific background facts and experiences on which Ludwick based his opinions in response to CaptionCall, L.L.C. v. Ultratec, Inc., IPR2014-00780. The Board noted that this would be supplemental information, rather than supplemental evidence, because it is not made in response to an objection. Therefore, Patent Owner must have made two showings: (i) why the supplemental information reasonably could not have been obtained earlier; and (ii) the consideration of the supplemental information would be in the interests of justice. Petitioner objected that Patent Owner did not meet these requirements, and cannot meet these requirements because the information could have been obtained earlier. The Board agreed with Petitioner, noting that Patent Owner did not explain adequately the three-week delay between the CaptionCall decision and the request to supplement the declaration.

CaptionCall, L.L.C. v. Ultratec, Inc., IPR2015-00636; IPR2015-00637
Paper 18: Order on Conduct of the Proceeding
Dated: January 6, 2016
Patents: 8,917,822 B2; 8,908,838 B2
Before: William V. Saindon, Barbara A. Benoit, and Lynne E. Pettigrew
Written by: Benoit