Takeaway:  A party may not successfully oppose a motion to submit supplemental information based on the argument that the supplemental information was not included in a petition, since this is the case with any proposed supplemental information.

In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information in each of IPR2015-01078 and IPR2015-01080. The first of these involved an inter partes review of the ‘694 patent, and the second of these involved an inter partes review of the ‘954 patent.

Petitioner had filed a Motion to Submit Supplemental Information in each proceeding which sought authorization for Petitioner to submit a supplemental declaration relating “to the alleged public accessibility of one of the prior art references relied upon by Petitioner in its Petitions.” Patent Owner opposed.

The Board began by noting the requirements under for 37 C.F.R. § 42.123(a) for a motion to submit supplemental information. The Board concluded that the requirement that the request for authorization to file the motion within one month of the date of trial institution had been met in this instance. The Board concluded that the requirement that the supplemental information be “relevant to a claim for which trial has been instituted” had been met as well.

As to the second requirement, the Board agreed that the declaration sought to be submitted as supplemental information was relevant to the claims at issue because it related to “the alleged public accessibility of the GoPro Catalog” and because it provided information that was not included in the Jones declaration submitted along with the Petition. Thus, the Board concluded that the Motion to Submit Supplemental Information satisfied the requirements of C.F.R. § 42.123(a). The Board went on to conclude that allowing the submission of the supplemental information at this time, rather than at some later point, was appropriate because this would “allow a more complete record for cross-examination and briefing during trial,” for example.

Patent Owner had challenged the motion on several grounds, but the Board did not find either of these proposed grounds to be persuasive. In response to Patent Owner’s argument that the supplemental declaration was “an attempt to bolster the challenges presented in the Petition[s] and effectively change the evidence originally relied upon[,]” for example, the Board agreed that the supplemental information would be “new, in that it was not included with the Petitions,” but went on to point out that this “is the case with any proposed supplemental information.”

GoPro, Inc. v. Contour IP Holding LLC, IPR2015-01078; IPR2015-01080
Paper 28: Decision on Petitioner’s Motion to Submit Supplemental Information
Dated: December 28, 2015
Patents: 8,896,694 B2; 8,890,954 B2
Before: Justin T. Arbes, Michael J. Fitzpatrick, and Neil T. Powell
Written by: Arbes