Takeaway: A motion for late submission of supplemental information under § 42.123(b) 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.

In its Order, the Board authorized Patent Owner to file a Motion for Late Submission of Supplemental Information.    

On December 8, 2015, Patent Owner sent an email to the Board with Patent Owner’s proposed demonstrative exhibits attached, pursuant to the Board’s oral hearing Order. On the following day, Petitioner sent an email to the Board objecting to demonstrative exhibits 27-31. On December 10, 2015, the Board sustained Petitioner’s objections to exhibits 27, 30, and 31 and instructed the parties to be prepared to argue whether the statements, images, and documents referenced in exhibits 28 and 29 were appropriate.

During oral argument, Patent Owner confirmed that it sought authorization to file a motion for late submission of supplemental information under §42.123(b). Petitioner opposed the motion. Under §42.123(b) a motion to submit supplemental information 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. Exhibits 28 and 29 relate to Patent Owner’s allegations of copying by Petitioner. Patent Owner stated that she first became aware of the images and documents in late September 2015. Patent Owner stated that the statements concerning the alleged copying are supported by Patent Owner’s sworn deposition testimony in a co-pending district court action. The Board determined that Patent Owner’s deposition testimony contradicts Petitioner’s assertion that there is no evidence in the record to support the allegation of copying.

The Board concluded that Patent Owner has made sufficient showing for the Board to authorize the filing of a motion for late submission of supplemental information under 42.123(b). Petitioner further objected to the proposed supplemental information as protected as confidential business information in the co-pending district court action. The Board instructed Patent Owner to file a motion to seal confidential information pursuant to 37 C.F.R. § 42.13 and for entry of the Board’s Default Protective Order

LOWE’S HOME CENTERS, LLC v. MAUREEN REDDY, IPR2015-00306
Paper 16: Order regarding Late Submission of Supplemental Information
Dated: December 15, 2015
Patents: D677,423
Before: Josiah C. Cocks, Phillip J. Kauffman, and Brian P. Murphy
Written by: Murphy