{"id":2024,"date":"2015-12-31T17:00:08","date_gmt":"2015-12-31T22:00:08","guid":{"rendered":"https:\/\/aia.harnessip.com\/?p=2024"},"modified":"2016-01-01T11:18:23","modified_gmt":"2016-01-01T16:18:23","slug":"pennywise-and-ground-foolish","status":"publish","type":"post","link":"https:\/\/aia.harnessip.com\/?p=2024","title":{"rendered":"Pennywise and Ground Foolish"},"content":{"rendered":"

In\u00a0 Redline Detection, LLC v. Star Envirotech, Inc.<\/em>, [2015-1047] (December 31, 2015) the Federal Circuit affirmed the PTAB’s denial of the Redline’s motion to submit supplemental information (an expert declaration) and the PTAB’s determination that Redline failed to show claims 9 and 10 of U.S. Patent No. 6,526,808 were obvious.<\/p>\n

Redline filed its petition for IPR on January 2013, which was instituted on July 1, 2013.\u00a0 On July 30, 2013, Redline filed a Motion for Supplemental Disclosure of New Exhibits, requesting submission of four pieces of evidence. In August 2013, the PTAB denied\u00a0Redline\u2019s request to submit supplemental information and expunged the submitted evidence.<\/p>\n

37 CFR \u00a742.123(a) states:<\/p>\n

Motion to submit supplemental information.\u00a0 Once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with the following requirements:<\/p>\n

\u00a0\u00a0 (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.<\/p>\n

(2) The supplemental information must be relevant to a claim for which the trial has been instituted.<\/p>\n

The PTAB concluded Redline did not establish a sufficient basis for submitting new evidence and its \u201c\u2018supplemental evidence\u2019 is in essence something more than just supplemental evidence.\u00a0 On Appeal Redline argued that \u00a742.123(a) stated the only conditions on the admission of supplemental evidence, and that\u00a0the PTAB had no discretion to reject its Expert declaration.\u00a0 Before the Federal Circuit Redline explained that its failure to submit the expert was a cost savings strategy, so that the Expert did not waste time on grounds for which trial was not instituted.<\/p>\n

The Federal Circuit found that the PTAB\u2019s interpretation of its governing regulations was “not plainly erroneous”:<\/p>\n

Its interpretation of \u00a7 42.123(a) is consistent with the regulation\u2019s plain language and the USPTO\u2019s intent in promulgating \u00a7 42.123. The plain language of \u00a7 42.123(a) does not exclude the application of other general governing regulations.<\/p><\/blockquote>\n

The Federal Circuit said that the guiding principle for the PTAB in making any determination is to \u201censure efficient administration of the Office and the ability of the Office to complete IPR proceedings in a timely manner,\u201d and that requiring admission of supplemental information so long as it was timely submitted and relevant to the IPR proceeding would cut against this mandate and alter the intended purpose of IPR proceedings.<\/p>\n

Redline pointed to Pacific Market Int\u2019l, LLC v. Ignite USA, LLC<\/em>, IPR2014-00561, Paper 23 at 3 (P.T.A.B. Dec. 2, 2014)) as a case where the Board accepted an expert declaration as supplemental information.\u00a0 However, the Federal Circuit reiterated that the timeliness and relevancy requirements of \u00a742.123(a) are\u00a0additional<\/em> requirements that must be construed within the overarching context of the PTAB\u2019s regulations governing IPR and general trial proceedings.\u00a0\u00a0The Federal Circuit further noted that\u00a0“the PTAB has discretion to grant or deny motions as it sees fit.” citing\u00a037 C.F.R. \u00a7 42.5(a), (b).<\/em><\/p>\n

The Federal Circuit further pointed out that in Pacific Market <\/em>the PTAB cautioned that:<\/p>\n

\u201c[a]lthough a party may meet the [37 C.F.R. \u00a7 42.123] requirements . . . that does not, itself, guarantee that the motion will be granted.\u201d Id.at 3 (emphasis added). This provision does not offer \u201ca routine avenue for bolstering deficiencies in a petition raised by a patent owner in a Preliminary Response.\u00a0 . . . Petitioner should not expect . . . a \u2018wait-and-see\u2019 opportunity to supplement a petition after initial comments or arguments have been laid out by a patent owner.\u201d Id.<\/p><\/blockquote>\n

The Federal Circuit found that Redline\u2019s characterization of Pacific Market<\/em> was\u00a0“inaccurate and misleading”. The PTAB expressly stated 37 C.F.R. \u00a7 42.123(a) is not a routine avenue to pursue, nor does the regulation require an automatic acceptance of, supplemental information. The Federal Circuit said “[t]his is the exact opposite of having an obligation to allow the supplementary information.” The Federal Circuit concluded “Redline fails to appreciate the stark difference between the short, supplemental expert report, which the PTAB reasonably permitted in Pacific Market International, and its de novo expert report submitted for the first time. Pacific Market International is inapposite.”<\/p>\n

Expert declarations are an important part of a Petition for inter partes review, used about 90% of the time.\u00a0 Waiting to submit an expert declaration until after institution to save costs is not an effective strategy.<\/p>\n","protected":false},"excerpt":{"rendered":"

In\u00a0 Redline Detection, LLC v. Star Envirotech, Inc., [2015-1047] (December 31, 2015) the Federal Circuit affirmed the PTAB’s denial of the Redline’s motion to submit supplemental information (an expert declaration) and the PTAB’s determination that Redline failed to show claims … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_jetpack_newsletter_access":"","_jetpack_dont_email_post_to_subs":false,"_jetpack_newsletter_tier_id":0,"_jetpack_memberships_contains_paywalled_content":false,"_jetpack_feature_clip_id":0,"_jetpack_memberships_contains_paid_content":false,"footnotes":"","jetpack_publicize_message":"","jetpack_publicize_feature_enabled":true,"jetpack_social_post_already_shared":true,"jetpack_social_options":{"image_generator_settings":{"template":"highway","default_image_id":0,"font":"","enabled":false},"version":2},"jetpack_post_was_ever_published":false},"categories":[4],"tags":[],"class_list":["post-2024","post","type-post","status-publish","format-standard","hentry","category-ipr"],"jetpack_publicize_connections":[],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"jetpack_shortlink":"https:\/\/wp.me\/p4ZIpB-wE","_links":{"self":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2024","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2024"}],"version-history":[{"count":3,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2024\/revisions"}],"predecessor-version":[{"id":2027,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2024\/revisions\/2027"}],"wp:attachment":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2024"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2024"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2024"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}