Takeaway: Supplemental information may only be filed if a motion to submit supplemental information is granted. By contrast, supplemental evidence is served in response to an objection to the admissibility of evidence, and may also be filed with an opposition to a motion to exclude the objected to evidence.

In its Decision, the Board denied Patent Owner’s Motion to Submit Supplemental Information and ordered that the supplemental declaration be expunged from the record. Patent Owner sought to submit as supplemental evidence a supplemental declaration from Richard Mander, Ph.D., which the Board had previously authorized Patent Owner to file.

Pursuant to 37 C.F.R. § 42.123(b), a party seeking to submit supplemental information more than one month after the date a trial is instituted “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.” Supplemental information is not the same as supplemental evidence, and “may only be filed if a motion to submit supplemental information under 37 C.F.R. § 42.123 is granted.”

In this case, Patent Owner served the supplemental declaration “[i]n response to Petitioner’s objections” to the admissibility of the original declaration on secondary considerations of non-obviousness. Specifically, Patent Owner sought to moot Petitioner’s objections that Dr. Mander did not introduce evidence “sufficient to support a finding that the witness has personal knowledge in the matter.” Fed. R. Ev. 602. The Board found that “the supplemental declaration is more appropriately characterized as supplemental evidence, rather than supplemental information, because it was served in response to Petitioner’s evidentiary objections and is responsive to Petitioner’s objections regarding Dr. Mander’s alleged lack of personal knowledge.”

The Board found Patent Owner’s arguments not persuasive. First, the Board rejected Patent Owner’s contention that “it reasonably could not have obtained the supplemental declaration earlier because it was unaware of Petitioner’s objections until Petitioner made them” because “that is the case with every objection to the admissibility of evidence.” Second, because the supplemental declaration is considered supplemental evidence, not supplemental information, Patent Owner will have the opportunity to file the supplemental declaration with its opposition to Petitioner’s motion to exclude Dr. Mander’s original declaration (should it choose to file such a motion), otherwise Petitioner’s objection regarding Dr. Mander’s alleged lack of personal knowledge will be waived.

GoPro, Inc. v. Contour IP Holding LLC, IPR2015-01078
Paper 40: Decision on Patent Owner’s Motion to Submit Supplemental Information
Dated: April 7, 2016
Patent: 8,896,694 B2
Before: Justin T. Arbes, Michael J. Fitzpatrick, and Neil T. Powell
Written by: Arbes
Related Proceedings: IPR2015-01080.