January 20, 2020

January 20, 2020

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January 17, 2020

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Supplemental Information Authorization Hard to Come By: International Business Machines Corporation v. Intellectual Ventures II LLC

The Patent Trial and Appeal Board (PTAB, the Board) denied a motion by a petitioner to file a motion for supplemental information to introduce the deposition testimony of a named inventor, obtained in the co-pending district court case, explaining that the appropriate time to introduce the testimony would be in its reply to the patent owner’s response.  International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00180 (PTAB, Aug. 7, 2014).  (Quinn, APJ). 

Supplemental information is evidence a party relies on to support an argument on the merits.  Rule § 42.123(b) provides that a party seeking to submit supplemental information more than one month after the date the trial is instituted must request authorization by filing a motion to submit the information.

In this case, after the decision to institute had issued and after the patent owner’s response was filed, the petitioner sought to file a motion to submit supplemental information.  During the ensuring conference call, the petitioner contended that introduction of the inventor’s testimony should be authorized as supplemental information because that testimony is “highly relevant” to claim construction.  The petitioner argued that its motion was appropriate in view of the 15-page limit on its reply to the patent owner’s statement. 

The PTAB denied the request, explaining that the appropriate mechanism for introduction of the inventor’s testimony would be as support in connection with its reply, where the petitioner has an opportunity to address the arguments in the patent owner’s response.  The Board further explained that a motion to file supplemental information is neither a vehicle for explaining the significance of the testimony nor an opportunity to obtain extra pages for argument that should be presented in a reply.  If the inventor testimony supports the broadest reasonable interpretation and its consideration would challenge either patent owner’s position or the PTAB’s claim construction, the petitioner is free to make its argument regarding that testimony in the reply.  The PTAB noted, however, that the litigation-derived inventor’s testimony would likely be little probative value for purpose of claim construction. 

The rule in question (§ 42.123(b)) places limits on the introduction of evidence, regardless of whether it is relevant to claim construction, after trial has been instituted.  The rule provides that consideration of supplemental information is to be permitted based on an interest of justice.  The PTAB was not persuaded by the petitioner’s allegation that it would be able to show that the inventor’s testimony is “highly relevant” to a claim for which trial has been instituted such that, in the interests of justice, it should be introduced as supplemental information. 

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About this Author

Tomoki Tanida, Patent Procurement Attorney, McDermott Will Emery Law Firm

Tomoki (Tom) Tanida is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm's Washington, D.C. office.  He focuses his practice on patent procurement and client counseling on infringement and validity.

Tom has extensive experience preparing and prosecuting patent applications before the U.S. Patent and Trademark Office, as well as foreign patent offices, in areas of technology including semiconductor electronics, analog circuits, telecommunication systems and computer software applications.   He has performed...