Takeaway: Exhibits that are filed with a motion to submit supplemental information to provide additional evidence regarding a prior art’s public availability may be treated as supplemental information even if the exhibits are responsive to a patent owner’s evidentiary objections.

In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information as evidence to confirm the public accessibility of a prior art reference. Petitioner sought to submit several exhibits, including declarations related to the public accessibility of the Broggi reference as well as an article citing to the Broggi reference.

According to 37 C.F.R. § 42.123(a), a motion to submit supplemental information may be filed if authorization is requested within one month of institution of trial. In the instant proceeding, Petitioner sought authorization within one month of institution and therefore, authorization was appropriate.

The Board noted that Petitioner bears the burden to establish that it is entitled to the requested relief. Petitioner argued that requiring additional proof of the Broggi reference’s public availability was unforeseeable because its prior art status was sufficient to institute trial. However, Petitioner “need not demonstrate that the supplemental information proffered could not have been obtained earlier” because the motion is under 37 C.F.R. § 42.123(a) and not Section 42.123(b).

Petitioner further argued that the proposed supplemental information would not change the “grounds of unpatentability or the evidence presented initially in the Petition,” and that the information was not withheld intentionally. The Board agreed indicating that the Petition and supporting declaration alleged unpatentability based upon Broggi and no evidence was presented that the information was withheld. In addition, the Board stated that the additional information would not unduly delay the proceedings in light of the fact that Patent Owner’s Response was not yet due and Patent Owner had not alleged that there was insufficient time to respond.

Patent Owner also argued that the proposed exhibits should be considered supplemental evidence rather than supplemental information because they respond to evidentiary objections raised by Patent Owner. However, the Board held that the exhibits being responsive to evidentiary objections does not preclude them from being filed and considered as supplemental information. Patent Owner also argued that the exhibits filed as proposed supplemental information should be expunged because they were improperly filed with Petitioner’s motion. The Board stated that Petitioner’s submittal was not problematic “in that it facilitated [the Board’s] review” and could be expunged if necessary. Accordingly, the Board granted Petitioner’s Motion to Submit Supplemental Information.

Valeo North America, Inc. v. Magna Electronics, Inc., IPR2014-01204
Paper 26: Decision on Petitioner’s Motion to Submit Supplemental Information
Dated: April 10, 2015
Patent: 8,386,114 B2
Before: Jameson Lee, Phillip J. Kauffman, and Matthew R. Clements
Written by: Clements
Related Proceedings: IPR2014-01208; IPR2014-01029; IPR2014-01030; IPR2014-01031