Takeaway: When a petitioner wishes to seek authorization to submit supplemental information, it must actually request authorization to file a motion to submit supplemental information—and not merely request a conference call with the Board—within one month of institution of trial. 

In its Decision, the Board denied Petitioner’s request for authorization to file a motion to submit supplemental information.

On June 15, 2015, the Board instituted inter partes review as to claims 16-18 and 20-23 of U.S. Patent No. 6,895,520. Approximately two months later, Petitioner “requested the authorization to file a motion to submit supplemental information—namely, evidence that purportedly confirms the public accessibility of ACPIS,” a reference on which one of the instituted grounds of unpatentability is based in part.

“A request for authorization to file a motion to submit supplemental information under 37 C.F.R. § 42.123(a) is required to be made within one month of the date for which the trial has been instituted.” Here, Petitioner contended that its request was timely because it requested a conference call with the Board within one month of the institution. The Board disagreed that “a request for a conference call, itself, constitutes a request for authorization for filing a motion to submit supplemental information.” The Board then determined that, even if the request was timely, nothing in the rules provides that such requests are automatically granted, and “Petitioner did not provide a persuasive explanation as to why submitting evidence that purportedly confirms the public accessibility of ACPIS is warranted at this juncture.”

Petitioner alleged that it obtained the additional evidence “in response to an objection made by Patent Owner regarding the public accessibility of ACPIS.” Patent Owner, however, contended that it had challenged only the admissibility of ACPIS, not its public accessibility. The Board agreed with Patent Owner.

The Board then noted that Petitioner had not explained “why the evidence that purportedly confirms the public accessibility of ACPIS could not be filed later as supporting evidence to its reply, should Patent Owner argue, in the response, that ACPIS is not a prior art printed publication under § 102.” In also determined that “supplemental evidence is not necessary to be filed at this time because the admissibility objection may be overcome by the evidence” and stated “[i]f Patent Owner continues to object to the admissibility of ACPIS and subsequently files a motion to exclude ACPIS, Petitioner may file the previously-served supplemental evidence as supporting evidence to its Opposition.”

Thus, the Board stated that it did “not discern, at this juncture of the proceeding, a sufficient basis for authorizing Petitioner to file a motion to submit supplemental information under 37 C.F.R. § 42.123(a)” and, therefore, denied the request for authorization to file the motion.

LG Electronics, Inc. v. Advanced Micro Devices, Inc., IPR2015-00324
Paper 17: Order Denying Petitioner’s Request for Authorization to File a Motion to Submit Supplemental Information
Dated: July 20, 2015
Patent: 6,895,520 B1
Before: Joni Y. Chang, Brian J. McNamara, and Rama G. Elluru
Written by: Chang