Federal Circuit Upholds PTAB Decision Denying Timely Motion to File Supplemental Information in an IPR

In a December 31 precedential decision, the Federal Circuit upheld a decision of the Patent Trial and Appeal Board (PTAB) denying a petitioner’s motion to file supplemental information in an Inter Partes Review trial. The motion met the two requirements of 37 CFR § 42.123(a), i.e., that it be filed within one month of the date the trial is instituted, and that it be relevant to a claim for which the trial has been instituted. The petitioner admitted to the PTAB that it intentionally delayed filing the additional information to save costs, but argued that the reason for its delay was not relevant under § 42.123(a). In particular, the petitioner argued that the PTAB conflated § 42.123(a) with other parts of § 42.123 that required, inter alia, that the supplemental information reasonably could not have been obtained earlier. The Federal Circuit held that the PTAB did not abuse its discretion in denying the motion. Particularly, it found that the PTO must be given deference in interpreting its own regulations regarding PTAB proceedings, including that the regulations “be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” The Federal Circuit ruled that the PTO’s rules make sense, as they are designed to encourage submission of “all of the evidence that supports the ground of unpatentability” at the petition stage. The court found that the PTAB was justified in finding that cost-savings was not a sufficient reason for granting the motion.  Click here for our detailed summary of this decision.