Motion to File Supplemental Information Under 37 C.F.R. § 42.123(a) and 37 C.F.R. § 42.223(a)

Summary

This template is for preparing a motion to file supplemental information under 37 C.F.R. § 42.123(a) or 37 C.F.R. § 42.223(a) in AIA trial practice before the Patent Trial and Appeal Board (PTAB). This template includes practical guidance and drafting notes. 37 C.F.R. § 42.123(a) applies to inter partes reviews (IPRs) and 37 C.F.R. § 42.223(a) applies to post-grant reviews (PGRs). Under both 37 C.F.R. § 42.123(a) and 37 C.F.R. § 42.223(a), once a trial has been instituted before the PTAB, either party may file a motion to submit supplemental information in accordance with the following requirements: (1) a request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted; and (2) the supplemental information must be relevant to a claim for which the trial has been instituted. Defining Supplemental Information Note that there is a firm distinction between supplemental information and supplemental evidence. A motion under 37 C.F.R. § 42.123 or 37 C.F.R. § 42.223 is for supplemental information, while supplemental evidence is typically associated with 37 C.F.R. § 42.64(b)(2), which provides that the party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection. No proof of relevance is required for the submission of the supplemental evidence. In addition to the above, the PTAB may deny a motion to file supplemental information if it contains supplemental evidence. For example, in Nanobebe US Inc. v. Mayborn UK LTD., 2023 Pat. App. Filings LEXIS 6917 (P.T.A.B. August 17, 2023), the Board determined that the petitioner met the timeliness and relevance requirements under 37 C.F.R. § 42.123(a) but still denied the motion because the supplemental information would have introduced both new evidence and new arguments into the case. The Board found that "[d]enying entry of supplemental information that effectively changes the argument and evidence originally relied upon in a petition - whether inadvertently omitted or not - is in accord with the statutory requirement that a petition must identify, with particularity, the evidence supporting the challenge to each claim." Id. at *4. See also Celltrion, Inc. v. Chugai Seiyaku Kabushiki Kaisa, 2022 Pat. App. Filings LEXIS 10751, at *5 (P.T.A.B. Oct. 25, 2022) (granting motion to file supplemental information that clarified data submitted with the petition rather than bolstering the originally-submitted evidence, the Board stating that it "has allowed supplemental information that did not change the grounds of patentability or the evidence relied upon in the petition, and has rejected supplemental information that was used to bolster the petition based on information in the preliminary response or institution decision. See Am. Well Corp. v. Teladoc Health, Inc., IPR2021-00748, Paper 23 at 5-7 (PTAB Feb. 28, 2022) (collecting cases).") In American Well Corporation v. Teladoc Health, Inc., IPR2021-00748, Paper 23, at *5 (P.T.A.B. Feb. 28, 2022) (cited above in Celltrion), the Board denied a motion to file supplemental information because the supplemental expert witness declaration submitted by the petitioner "introduces new citations and conclusions by Dr. Fischer that supplant, not supplement, the original motivation-to-combine argument in the Petition" Id. at *12. The Board clarified that supplemental information may be submitted when the information does not change the grounds of patentability authorized in the proceeding and does not change the evidence initially presented in the petition in support of those grounds. Id. at *5. The Board further clarified that a motion to file supplemental information should be denied when the supplemental information is used to refine or bolster challenges originally presented in the petition, based on information in the preliminary response or institution decision. Id. at *7. Consideration of Efficiency In addition to the timeliness and relevance of information considered under 37 C.F.R. § 42.123(a) and 37 C.F.R. § 42.223(a), the PTAB also considers "efficiency" in its decisions on motions to file supplemental information. "The U.S. Court of Appeals for the Federal Circuit has instructed us that the 'guiding principle' in making any determination, including whether to grant a motion to submit supplemental information, is to 'ensure efficient administration of the Office and the ability of the Office to complete [inter partes review] proceedings in a timely manner.' Redline Detection LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015)." See RPX Corp. v. IYM Techs. LLC, 2018 Pat. App. Filings LEXIS 6024, at *2 (P.T.A.B. May 14, 2018). The Interests of Justice Standard For requests to file supplemental information either beyond the one-month deadline or for supplemental information which is not relevant to a claim for which the trial was instituted, the Board applies an additional standard which requires the submission of the supplemental information to be "in the interests of justice." A late request to file supplemental information may be granted, though it is not guaranteed. Under both 37 C.F.R. § 42.123(b) and 37 C.F.R. § 42.223(b), which apply to IPRs and PGRs, respectively, if one of the parties seeks to submit supplemental information more than one month after the date the trial was instituted, authorization to file a motion to submit the information must be requested, and the motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier, and also that consideration of the supplemental information would be in the interests of justice. Similar standards apply if either party seeks to file supplemental information which is not relevant to a claim for which the trial has been instituted. See 37 C.F.R. 42.123(c) and 37 C.F.R. 42.223(c). For both IPRs and PGRs, if one of the parties seeks to submit supplemental information not relevant to a claim for which the trial has been instituted, authorization to file a motion to submit the information must be requested, and the motion must show why the supplemental information reasonably could not have been obtained earlier, and also that consideration of the supplemental information would be in the interests of justice. The interests of justice standard is relatively broad and allows the Board to deny motions based on any of a number of different factors. Although relevance of the supplemental information is typically a primary factor, the Board may also consider gamesmanship, prejudice, the timing of the submission in relation to the stage of the proceeding, as well as a number of other factors. As an example, in Samsung Elecs. Co. v. Netlist, Inc., 2023 Pat. App. Filings LEXIS 10586 (P.T.A.B. Dec. 6, 2023), the Board denied the patent owner's motion because "this testimony would be of little probative value and is substantially outweighed by unfair prejudice, delay, and wasting time." Id. at *3. The Board also cited USCS Fed Rules Evid R 403 in making this determination. See also Stryker Corp. v. Osteomed LLC, 2023 Pat. App. Filings LEXIS 1774, at *6 (P.T.A.B. March 7, 2023) ("the proposed supplemental information would have no bearing on our final decision and Patent Owner has not established that the introduction at this late date of testimony having no bearing on our final decision would be in the interest of justice.") In contrast, the Board granted the petitioner's motion in Innovative Growers Equip., Inc. v. Pipp Mobile Storage Sys., 2023 Pat. App. Filings LEXIS 1742, at * 11 (P.T.A.B. March 6, 2023) because the supplemental information was not available until the time of the request and the petitioner was diligent in requesting the filing of the supplemental information ("we grant the Motion to submit the Sullivan Translation as supplemental information because Petitioner has shown that upon learning that Translator Joshi would not appear for a deposition, Petitioner took prompt and reasonable efforts to obtain a new translation, which reasonably could not have been obtained earlier under the circumstances of this case.") Motions to file supplemental information which is not relevant to a claim for which the trial has been instituted are relatively rare since the provisions thereof are directed towards supplemental information which is not relevant to the claim(s) for which the trial was instituted. An example of when such a motion is appropriate is found in Luv N' Care, Ltd. v. Munchkin, Inc. 2016 Pat. App. Filings LEXIS 2185 (P.T.A.B. April 6, 2016), where the supplemental testimony related to proposed substitute claims still under consideration by the Board. Filing Requirements Note that the filing requirements of 37 C.F.R. § 42.6(b) apply to motions to file supplemental information under 37 C.F.R. § 42.123(a) and 37 C.F.R. § 42.223(a): (b) Modes of filing. (1) Electronic filing. Unless otherwise authorized, submissions are to be made to the Board electronically via the Internet according to the parameters established by the Board and published on the Web site of the Office. (2) (i) Filing by means other than electronic filing. A document filed by means other than electronic filing must: (A) Be accompanied by a motion requesting acceptance of the submission; and (B) Identify a date of transmission where a party seeks a filing date other than the date of receipt at the Board. (ii) Mailed correspondence shall be sent to: Mail Stop PATENT BOARD, Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313–1450. It is important that your motion is correctly filed and displayed in the record. You should, therefore, include the following caption in a header on each page of your motion: Motion to File Supplemental Information Under 37 C.F.R. § [42.123(a) / 42.223(a)] Case No.: [case number] U.S. Patent No. [patent number] Each page should also be numbered to ensure that every page has been properly filed and to facilitate reference a particular page of the motion in the future, if necessary.