Takeaway: A motion to submit supplemental information more than one month after the date the trial is instituted must show (a) why the supplemental information reasonably could not have been obtained earlier, and (b) that consideration of the supplemental information would be in the interests-of-justice.

In its Decision, the Board granted-in-part and denied-in-part Patent Owner’s motion to submit supplemental information. Patent Owner sought to file nine references in the Declaration of Dr. Grabowski and a corrected version of Exhibit 2133. Patent Owner noted that several documents were erroneously not filed as exhibits with Dr. Grabowski’s declaration. Patent Owner first became aware of the error on January 12, 2016.

A motion to submit supplemental information more than one month after the date the trial is instituted “must show [(a)] why the supplemental information reasonably could not have been obtained earlier, and [(b)] that consideration of the supplemental information would be in the interests-of-justice.”

The Board noted that Patent Owner was in possession of the supplemental information at the time of filing its Patent Owner Response, and had opportunities to discover and correct the error. Patent Owner asserted that it is in the interests of justice because “the documents will aid in the administration of the proceeding, will cause no prejudice to and are already in Petitioners’ possession, and, by contrast, Patent Owner would be prejudiced by denying this motion.” Petitioners asserted, inter alia, that the protective order in the related litigation has prohibited lead counsel for Mylan, who is not involved in that litigation, from accessing “certain of the proposed supplemental information due to a protective order in the related litigations.”

In weighing these factors, the Board granted Patent Owner’s motion in part. The Board was persuaded that any prejudice to Petitioners with respect to the publicly available documents is minimal. However, to the extent any of the nine documents were marked by Patent Owner as subject to the protective order in the related litigation when originally produced to Petitioners, the Board was not persuaded that considering those confidential documents would be in the interests of justice given the delay in producing those documents to Petitioners.

MYLAN PHARMACEUTICALS INC. and AMNEAL PHARMACEUTICALS LLC v. YEDA RESEARCH & DEVELOPMENT CO. LTD., IPR2015-00643, -00644, -00830
Papers 48, 49, and 43: Granting-in-Part and Denying-in-Part Patent Owner’s Motion to File Supplemental Information
Dated: February 1, 2016
Patents: 8,232,250, 8,399,413, and 8,969,302
Before: Sheridan K. Snedden, Zhenyo Yang, and Tina E. Hulse
Written by: Hulse