In Pacific Market International, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 23, (December 2, 2014), the Board granted Petitioner’s motion to file a Supplemental Declaration of its expert, with additional reasons to combine the references.

The Board said that although a party may meet the requirements laid out in 37 C.F.R. § 42.123 so as to obtain authorization to file a motion to submit supplemental information, that does not, itself, guarantee that the motion will be granted. The provision for submitting supplemental information is not intended to offer a petitioner a routine avenue for bolstering deficiencies in a petition raised by a patent owner in a Preliminary Response.

The Board observed that “The supplemental testimony does not operate to change any grounds of unpatentability that were authorized in this proceeding, nor does it change the type of evidence initially presented in the Petition to support those grounds of unpatentability. Rather, as urged by PMI, the supplemental testimony is offered simply as ‘additional evidence that [in PMI’s view] confirms the prima facie obviousness of claims 16–19 as set forth in PMI’s petition.'”

Nothing that, as Patent Owner suggested, the information might be included with petitioner’s reply, the Board concluded that “[m]aking the Supplemental Declaration of record now increases the likelihood that the record will be developed more fully with a minimum number of depositions and without additional motion practice.”