Takeaway: Supplemental evidence that is offered to support the admissibility of originally filed evidence and to defeat a motion to exclude that evidence can be filed with a party’s opposition to a motion to exclude evidence without prior authorization from the Board as long as the supplemental evidence was timely served upon the moving party.

In its Memorandum, the Board explained the proper procedure for filing supplemental evidence that had previously been served pursuant to 37 C.F.R. § 42.64(b)(2). During a conference call with the Board, Patent Owner explained that it timely served supplemental evidence on Petitioner in response to Petitioner’s evidentiary objections to certain evidence filed with the Patent Owner Response.  The Board explained that this is the procedure contemplated by the Rules, which do not allow for filing of supplemental evidence at that time because such evidence may be enough to convince the objecting party that its objections have been overcome and that a motion to exclude is not warranted.

In this case, Petitioner filed a motion to exclude and Patent Owner believed that it could file the previously-served supplemental evidence with its opposition to the motion. Petitioner believed that the supplemental evidence may only be filed after a successful motion to file supplemental information pursuant to § 42.123.

The Board agreed with Patent Owner. The Board stated that supplemental information is different than supplemental evidence because supplemental evidence is offered solely to support the admissibility of the originally filed evidence and to defeat a motion to exclude that evidence, not to support an argument on the merits.  Supplemental information tends to support an argument on the merits and may only be filed if a § 123 motion is both authorized and granted.

Handi Quilter, Inc. and Tacony Corp. v. Bernina International AG, IPR2013-00364
Paper 30: Memorandum on Conduct of the Proceeding
Dated: June 12, 2004
Patent 6,883,446 B2
Before: Jennifer S. Bisk, Michael J. Fitzpatrick, and Georgianna W. Braden
Written by: Bisk