Takeaway: A motion to submit supplemental information will not be granted if the supplemental information would change the evidence relied upon in the petition to thereby bolster the grounds of unpatentability, based on feedback gleaned from the institution decision.

In its Decision, the Board denied Petitioner’s Motion to Submit Supplemental Information, finding that the requested relief would change the evidence Petitioner relied upon in its original challenge to claims 7-11 of the ‘586 patent.

Petitioner Mitsubishi Plastics, Inc. sought entry of expert witness declarations that were submitted in IPR2014-00679 and IPR2014-00692 by SK Innovations Co, Ltd. and LG Chem, Ltd., the petitioners in those proceedings. Petitioner argued that the declarations provide additional evidence in support of the grounds that were instituted (as to claims 7-11), as well as the non-instituted grounds (as to claims 1-6 and 12) that were the subject of a request for rehearing.

The Board first addressed Petitioner’s argument regarding the non-instituted claims 1-6 and 12. The Board had already denied Petitioner’s Request for Rehearing of the denial to institute a proceeding with respect to those claims.  Therefore, the Board found the proposed supplemental information to be irrelevant with respect to those claims.

Turning to Petitioner’s argument regarding claims 7-11, the Board found the supplemental information to be relevant to a claim for which trial had been instituted, satisfying the criteria for filing a motion to submit supplemental information under 37 CFR § 42.123(a). However, meeting the criteria for filing the motion does not mean the motion should be granted.  The Board stated that previous motions had been granted in situations where the supplemental information “did not change the grounds of unpatentability authorized in the proceeding, and did not change the evidence initially presented in the petition to support those grounds.”  However, motions that “sought to use the supplemental information at issue to bolster the challenges presented originally in the Petition, based on feedback gleaned from the institution decision” had been denied by the Board.  Changing the evidence that was originally presented in the petition does not comport with “the statutory requirement that a petition must identify, with particularity, the evidence supporting the challenge to each claim.”

In this case, the Board agreed with Patent Owner, and Petitioner had conceded, that the supplemental information was intended to “bolster the evidence originally submitted in support of the Petition.” Therefore, the Board denied Petitioner’s Motion.

Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524
Paper 30: Decision on Petitioner’s Motion to Submit Supplemental Information
Dated: November 28, 2014
Patent: 6,432,586 B1
Before: Francisco C. Prats, Donna M. Praiss, and Christopher L. Crumbley
Written by: Prats
Related Proceedings:  IPR2014-00679; IPR2014-00692