IBM Corp. v. Intellectual Ventures II LLC: Denying Motion for Leave to File Motion to file Supplemental Information IPR2014-00180
Friday, August 15, 2014

Takeaway: A motion for supplemental information will not be granted where the information, if relevant, could be brought into the case in petitioner’s reply.

In its Order, the Board denied Petitioner’s request for authorization for a motion to file additional information under 37 C.F.R. § 42.123(b). Petitioner requested that a redacted transcript of a named inventor should be authorized as supplemental information. The Petitioner argued that the inventor’s testimony bears directly on what the specification discloses, especially the disputed terms. Petitioner further argued that the testimony would be responsive to the Patent Owner Response. Petitioner stated that it wanted to submit the transcript as supplemental information instead of submitting the information with its Reply, because of considerations of trial tactics concerning inclusion of the information and the 15-page limit for Replies. Patent Owner indicated that it would oppose the motion, because of the uncertain significance of the testimony and for alleged lack of diligence in seeking the testimony.

The Board had previously denied a request by Petitioner to include portions of the deposition of the inventor obtain in the co-pending district court case. In that denial, the Board had indicated that the appropriate introduction of such testimony would be as support of its Reply, depending on what was argued in the Patent Owner Response.

The Board denied the second request for multiple reasons. One, the relevance of the inventor testimony must be explained in order for the panel to give it proper consideration, and a motion to file supplemental information should not be a vehicle for explaining the significance of that testimony or an opportunity to obtain extra pages for argument that properly should be present in a reply. Therefore, if the inventor testimony supports the broadest reasonable interpretation and challenges Patent Owner’s or the Board’s claim construction, then Petitioner should be making those arguments in its Reply, not a motion for supplemental information. Two, the Board was not persuaded that Petitioner would be able to show that the claim construction related inventor testimony is “highly relevant,” in this proceeding, to a claim for which trial has been instituted under Rule 123(b) such that, in the interests of justice, it should be introduced as supplemental information.

International Business Machines (IBM) Corp. v. Intellectual Ventures II LLC, CBM2014-00180
Paper 26: Order on Conduct of the Proceedings
Dated: August 7, 2014
Patent 7,634,666
Before: David C. McKone, James A. Tartal, and Miriam L. Quinn
Written by: Quinn

 

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