In Redline Detection v. Star Envirotech, the Federal Circuit confirmed that PTAB can decline to consider timely filed “supplemental” evidence from a petitioner (after filing its petition) pursuant to 37 C.F.R. § 42.123(a). While some PTAB decisions have permitted very limited use of Rule 123(a) by petitioners to supplement their petition after an institution decision, this latest decision shows that the rule offers limited relief because it confirms that the PTAB may decide in its discretion whether such supplemental information is appropriate.

In trial practice before the PTAB, 37 C.F.R. § 42.123 sets forth the conditions under which a party may submit supplemental information:

37 C.F.R. § 42.123 Filing of supplemental information
(a) Motion to submit supplemental information. Once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with the following requirements:
(1) A request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted.
(2) The supplemental information must be relevant to a claim for which the trial has been instituted.

There are two other subsections of this rule: 37 C.F.R. § 42.123(b) provides for late submission of relevant supplemental information, and 37 C.F.R. § 42.123(c) provides for submission of non-relevant information. Contrary to the open-ended language of subsection (a), under subsections (b) and (c), the party must show “why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.” Id. § 42.123(b), (c). Both § 42.123(b) and (c) require the authorization of the PTAB and a showing of cause. Such a cause requirement is absent from (a). The lack of a requirement, however, did not create a right. In Redline, the Federal Circuit ruled that the PTAB can decline to enter and consider evidence, even if timely filed under § 42.123(a).

Background

In January 2013, Redline filed an IPR petition against Envirotech’s patent. Redline filed 4 prior art references and asserted 12 separate bases of invalidity, including obviousness under § 103. Seeking to minimize the cost and complexity of filing expert declarations on all 12 issues, Redline did not file Declarations attesting to the level of skill in the art. Rather, it planned to file such evidence after the number of issues was narrowed, relying on under § 42.123(a).

On July 1, 2013, the PTAB instituted IPR on 2 grounds, notably obviousness, On July 30, Redline filed motion for supplemental disclosure, providing 4 new pieces of evidence including expert reports addressing the level of skill in the art. To Redline, the evidence was timely under § 42.123(a)(1) and met the relevance requirement of § 42.123(a)(2).

However, in August 2013, the PTAB denied the motion, noting Redline did not make “any attempt to justify the submission of an expert declaration after filing its petition and after a decision to institute has been made except to note that the move was cost effective . . . .”3 J.A. 4. In addition, the PTAB stated that Redline did not allege “any of the arguments or evidence in the newly submitted declaration [was] information that reasonably could not have been submitted with the Petition.” Without the Declarations, Redline was unable to meet its burden to show obviousness, and in June 2014 the PTAB upheld Envirotech’s patent.

Redline’s Appeal

Redline argued that refusing to admit the evidence was inconsistent with the regulatory history and plain meaning of § 42.123. If § 42.123(b) and (c) provide for late filings with a showing a cause, then the lack of similar language in § 42.123(a) meant that it was not required to show cause if it complied with timeliness and relevance requirements of § 42.123(a).

The Federal Circuit disagreed, holding that the PTAB was entitled to deference in interpreting its own rules and it is not plainly erroneous in doing so, and can exercise discretion in accepting/denying supplemental evidence. It also found that the PTAB’s decision was not inconsistent with other decisions allowing supplemental evidence, and not arbitrary and capricious.

Practice tip

Essentially, the Redline decision interprets § 42.123(a) as a right to file a motion to submit supplementary information, but there is no obligation on the part of the PTAB to admit and consider such information: It is entirely within the discretion of the PTAB. Practitioners should proceed on the assumption that the PTAB will not accept any supplementary information and always should seek to provide such information with the IPR petition.

Parties may also consider other ways that information can be introduced into the record, such as to impeach an expert on cross-examination and in a petitioner’s reply provided it addresses an argument raised by the patent owner’s response (see Mentor Graphics v. Synopsis, paper No. 17, explaining in a denial of a 123(a) motion that petitioner may bring supplemental information “to our attention in its Reply, provided the evidence is responsive to an argument made by Patent Owner” in accordance with 37 C.F.R. § 42.23(b)).

What is happening with the Federal Circuit’s Administrative Procedure Jurisprudence?

This decision regarding § 42.123(a) echoes the PTAB and Federal Circuit’s interpretation of § 42.121, where a party may file a motion to amend a patent, but there is no right to make such an amendment. The Federal Circuit has largely backed the PTAB’s strict limitations on when it allows amendments in its discretion.

A broader issue can arise if the courts find that the USPTO violates the Administrative Procedure Act in the manner in which it applies or interprets its rules. The Federal Circuit jurisprudence so far has shown deference to the PTO’s actions and interpretation of statutes and regulations in the IPR area, but more cases are likely to arise that raise this broader question.