A PTAB panel recently granted a Petitioner's motion to submit a second expert declaration that directly addressed deficiencies identified by the PTAB's Institution Decision. While a "close" case, the panel concluded that allowing the second declaration would "further our goals of efficiency and our mandate to 'secure the just, speedy, and inexpensive resolution' of this proceeding."
Under 37 C.F.R. § 42.123(a), a party may file a motion to submit supplemental information, provided that: (1) the request for authorization to file the motion is made within one month of the date the trial is instituted; and (2) the supplemental information is relevant to a claim for which trial has been instituted. However, the PTAB need not accept supplemental information just because it is timely and might be relevant.
In this instance, the supplemental declaration was intended to directly address a deficiency of
Petitioner argued that the purpose of the supplemental declaration was not to introduce new theories of unpatentability, but merely to correct a misunderstanding by the panel. In doing so, Petitioner also emphasized that the supplemental request would not delay proceedings, as the submission was well within the one-month period following the Institution Decision and
In granting Petitioner's motion, the PTAB panel first noted that the "guiding principle" in making any determination is to "ensure efficient administration of the Office and the ability of the Office to complete [inter partes review] proceedings in a timely manner." See IPR2022-00578, Paper 22 (citing Redline, 811 F.3d 435 at 445). With this in mind, the panel stated that this case was a close call. On the one hand, the panel found the supplementary declaration to be useful in clarifying the Kremer data originally cited in
Ultimately, the PTAB panel was persuaded by the fact that the second expert declaration did not actually change the grounds of unpatentability and would further the primary goal of efficiency. To the extent the Institution Decision created an unforeseen claim construction dispute, the panel stated that it would be "more efficient to address that dispute as early as possible to allow the parties an opportunity to fully brief that issue and any related issues that may arise." Id.
Takeaway: Addressing unfavorable preliminary findings in the Institution Decision through a second expert declaration is possible, but care should be taken to ensure that any supplementary filing is timely and does not change the grounds of unpatentability or evidence on which the petition is based.
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