Federal Circuit Clarifies Rules for IPR Supplemental Information Submission

January 07, 2016
Post by Blog Staff

The America Invents Act (AIA) created a number of new pseudo-litigation proceedings at the Patent Trial and Appeal Board (PTAB) of the USPTO.  While the proceedings, including inter-partes review (IPR), have been in place since September 16, 2012, the specific rules and procedures, as well as the underlying authority, continue to be resolved. 

On December 31, 2015, the Federal Circuit held in Redline Detection, LLC v. Star Environtech, Inc., that the PTAB's denial of a request to submit supplemental information during an IPR proceeding was within its power under 37 C.F.R. § 42.123(a). Star Envirotech owns the patent in question, which relates to methods of generating smoke for use in volatile and explosive environments. In January 2013, Redline filed an IPR petition with the PTAB requesting review of claims 9 and 10 of the patent. In support of their position, Redline filed a Motion of Supplemental Disclosure of New Exhibits, which was denied and the evidence was expunged from the record. The PTAB ultimately found that Redline had failed to prove that claims 9 and 10 were obvious.  Redline appealed the IPR decision, in part, on the basis that the PTAB's decision to deny the introduction of new exhibits was in error.

The Federal Circuit reviewed the decision of the PTAB, noting initially that under the AIA the USPTO's promulgated regulations (including those of the PTAB) are accepted by the court unless the interpretation is "plainly erroneous or inconsistent with the regulation."Further, as § 42.123(a) requires that the motion for supplemental information be made within one moth of the date of the trial and must be relevant to a claim, the PTAB noted that Redline did not make any attempt to justify the submission of their motion or that the information could not have been submitted with the Petition. The Federal Circuit further specifically held that the language of § 42.123(a) does not prohibit the PTAB from exercising discretion in granting or denying motions.

The full opinion can be found here.

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