In Pacific Market International, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 23, (December 2, 2014), the Board granted Petitioner’s motion\u00a0to file\u00a0a\u00a0Supplemental Declaration of its\u00a0expert, with additional\u00a0reasons to combine the references.<\/p>\n
The Board said that although a party may meet the requirements laid out in 37 C.F.R. \u00a7 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.<\/p>\n
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\u2019s view] confirms the prima facie obviousness of claims 16\u201319 as set forth in PMI\u2019s petition.'”<\/p>\n
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.”<\/p>\n
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In Pacific Market International, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 23, (December 2, 2014), the Board granted Petitioner’s motion\u00a0to file\u00a0a\u00a0Supplemental Declaration of its\u00a0expert, with additional\u00a0reasons to combine the references. The Board said that although a party may meet the … Continue reading