Takeaway: The Board can authorize a party to file supplemental evidence that had been previously served on the other party in response to a timely objection.

In its Order, the Board denied Petitioner’s request for authorization to file a motion to submit supplemental information and ordered Petitioner to file as exhibits the supplemental evidence served on Patent Owner. The Board had preliminarily determined that Exhibit 1007 was prior art as of 2002 based on a 2002 copyright notice and that Exhibit 1011 was prior art based on testimony. After institution, Patent Owner timely objected to the admissibility of both exhibits. In response, Petitioner served supplemental evidence in the form of three declarations and additional documentary evidence.

Patent Owner may cross-examine the individuals testifying in the three declarations, and may address the sufficiency of Petitioner’s evidence in its Patent Owner’s Response. Further, if Patent Owner believes the evidence is still inadmissible, Patent Owner may file a motion to exclude during the time set by the scheduling order.

Petitioner sought to submit the evidence as supplemental information. The Board did not believe it was necessary to submit that evidence as supplemental information when the evidence is known to Patent Owner, can be addressed on its merits in the Patent Owner’s Response, and potentially can be excluded with a successful motion to exclude. Thus, the Board determined that it would be more efficient to have the declaration and documents come before the Board through the supplemental evidence rule, instead of the supplemental information rule.

FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, IPR2014-00434
Paper 12: Order on Conduct of the Proceeding
Dated: October 7, 2014
Patent 8,426,813 B2; 8,193,496 B2
Before: Fred E. McKelvey, James T. Moore, and Trevor M. Jefferson
Written By: McKelvey