Takeaway: The Board allowed supplemental information to be submitted in accordance with 37 C.F.R. § 42.123(b) when Patent Owner requested the submission in a reasonable time after discovery an internal discrepancy in one of the references being relied on in the trial.

In its Decision, the Board granted Patent Owner’s Request to submit supplemental information. A motion to submit supplemental information filed more than one month after trial is instituted requires a showing of “why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interest-of-justice.” 37 C.F.R. § 42.123(b).

The Board noted that institution was based, at least partially, on a prior art treatise authored by Petitioner’s expert witness. Patent Owner argued in its motion to amend that the treatise “does not enable a person of ordinary skill in the art to make and use a filter having a transmission of greater than 90% as recited by proposed substitute claim 48.” Petitioner disputed this position by Patent Owner based on Ahrens II. Patent Owner argued that Petitioner’s argument was based on a discrepancy in Ahrens II.

During the deposition of Petitioner’s expert witness, it was discovered that the expert had relied, at least in part, on a German-language source document that was not disclosed in his declaration. Patent Owner requested submission of that source document. Petitioner argued that the reference was of only marginal relevance to the case, and that the request was untimely. Specifically, Petitioner argued that Patent Owner knew about the reference previously and should have investigated it sooner than the deposition.

In assessing whether the submission is in the interests of justice, the Board noted that “a trial is, first and foremost, a search for the truth.” Accordingly, the Board found that it is in the interest of justice to discern whether the scientific evidence submitted in Ahrens II is reliable. The Board further found that Ahrens II is relevant to the case, and that Petitioner’s arguments regarding timeliness are based on Patent Owner’s knowledge that Ahrens II existed, not when it discovered the internal inconsistency. Also, Petitioner had not affirmatively disclosed the internal inconsistency or that it was relying on only portions of Ahrens II to the possible exclusion of other portions less favorable it its case. Accordingly, the Board concluded that Patent Owner had “acted in a reasonable manner with respect to the timeliness criteria imposed by 37 C.F.R. § 42.123(b).” Thus, the Board granted the motion.

Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00599
Paper 44: Decision Granting Patent Owner’s Request to Submit Supplemental Information
Dated: May 5, 2015
Patent 7,119,960 C1
Before: William A. Capp, Trenton A. Ward, and David C. McKone
Written by: Capp