Takeaway: Supplemental information in the form of a second declaration in support of a petition may be allowed by the Board where the supplemental information was previously provided to the patent owner and where the patent owner still has the opportunity to cross-examine the declarant.

In its Decision, the Board granted-in-part Petitioner’s Motion to Submit Supplemental Information. In particular, the Board granted Petitioner’s request to submit a second declaration of Lawrence W. Thau Jr. but denied its request to submit a copy of Patent Owner’s brief filed in district court regarding a motion for summary judgment related to infringement.

The Board may authorize the filing of a motion to submit supplemental information once a trial has been instituted when (1) a request for authorization is made to the Board within one month of the institution date and (2) the supplemental information is “relevant to a claim for which the trial has been instituted.” 37 C.F.R. § 42.123. However, the party seeking to submit the supplemental information must establish it is entitled to the requested relief in light of the Board’s “mandate ‘to secure the just, speedy, and inexpensive resolution’ to this proceeding.”

With respect to the “Second Thau Declaration,” Petitioner contended that the 23 page document “provides additional information relevant to the patentability of claims of the ’599 patent and is directed exclusively to the grounds of unpatentability for which trial was instituted.” The Petition was filed on December 11, 2014, after which Mr. Thau prepared an expert report that was provided to Patent Owner in the related district court proceeding on February 17, 2015. Thus, all of the information in the Second Thau Declaration was previously provided to Patent Owner. Petitioner stated that Patent Owner is not prejudiced because the Declaration was being submitted prior to discovery and Patent Owner would still have the opportunity to cross examine Mr. Thau.

Patent Owner opposed, arguing that Petitioner sought to “enter a new declaration with new positions, arguments, and characterizations of the references at issue.” Patent Owner pointed out that where the first declaration included “a single sentence … on the reason for combining the asserted art,” the proposed second declaration included “a four page discussion.” Thus, Patent Owner argued that the second declaration was “an attempt to bolster Petitioner’s position by changing the evidence after the institution decision,” and no reason was provided why the information could not be included in the first declaration.

The Board granted Petitioner’s request, noting that the information was provided to Patent Owner before the Board’s Decision on Institution. Therefore, the declaration “was not created to address any deficiency with the Petition raised in [the Board’s] Decision.” Likewise, the Board noted that the declaration was not being offered to address deficiencies identified by Patent Owner because Patent Owner did not file a Preliminary Response. The Board also noted that unlike 37 CF.R. § 42.123(b), which is applicable to providing supplemental information more than one month after institution and requiring a showing why the information “could not have been obtained earlier,” Petitioner’s request “does not fail merely because it fails to provide a sufficient reason the information was not included in Mr. Thau’s first declaration.” The Board also found that the second declaration does not change the evidence in the Petition but “supplements the opinions previously provided.” Finally, the Board was not persuaded by Patent Owner’s arguments regarding prejudice in light of the fact that Patent Owner already had the information and could still depose Mr. Thau.

With respect to the summary judgment brief, the Board denied Petitioner’s request, finding the given reasons for submitting the supplemental information to be speculative. In particular, Petitioner contended that Patent Owner’s brief in the related litigation would be relevant to Patent Owner’s claim construction positions in the instant proceeding. However, the Board noted that Patent Owner had not filed either a Preliminary Response or Patent Owner Response, and that “any information purporting to refute Patent Owner’s position on claim construction in this proceeding is entirely speculative.” The Board also noted that Petitioner may again bring this information to the Board’s attention “provided the evidence is responsive to an argument made by Patent Owner.”

Victaulic Co. v. The Viking Corp., IPR2015-00423
Paper 16: Decision on Motion to Submit Supplemental Information
Dated: August 4, 2015
Patent: 7,845,599 B2
Before: Mitchell G. Weatherly, James A. Tartal, and Carl M. DeFranco Jr.
Written by: Tartal