Takeaway: If a petitioner would like to substantively revise its petition, then it must sufficiently explain why the substantive revision was not included in the original petition.

In its Order, the Board denied authorization for Petitioner to submit supplemental information. Petitioner requested authorization to supplement its Petition with a “recently discovered prior art patent,” U.S. Patent No. 5,516,466 (“the ’466 Patent”).

The Board initially instructed the parties that the proper method for communicating with the Board is to request a conference call via email with a short explanation as to why the party requests the call. The Board stated that Petitioner’s email contained substantive arguments regarding its request, which was tantamount to filing an unauthorized motion.  Therefore, the Board disregarded the email correspondence from both parties.

The Board found that Petitioner is effectively asking for authorization to substantively amend its Petition. The Board’s procedures for amending petitions are typically limited to correction of a clerical or typographical mistake pursuant to 37 C.F.R. § 42.104(c).  The Board is allowed to determine a proper course of conduct for a proceeding for any situation not specifically covered by the rules, but was not persuaded that Petitioner should be authorized to submit the proposed supplemental information in a revised Petition.  First, Petitioner filed a Notice of Intent to File Supplemental Information without obtaining authorization.  Second, the law requires a petition to include all of the asserted grounds of unpatentability, and Petitioner did not sufficiently explain why the ’466 patent was not included in its Petition, particularly when Patent Owner asserted that the ’466 Patent was known to Petitioner over a year ago, is listed on the face of the patent at issue, and is relied upon in the companion litigation.  Finally, Petitioner did not present a sufficient legal or factual basis to authorize the filing of a revised Petition.

National Environmental Products Ltd and N.E.P., Inc., d/b/a Neptronic v. Dri-Steem Corporation, IPR2014-01503
Paper 11: Order on Conduct of the Proceeding
Dated: November 4, 2014
Patent: 8,641,021
Before: Linda M. Gaudette, Kristina M. Kalan, and Kerry Begley
Written by: Kalan