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Federal Circuit Affirms PTAB Ruling on Filing Of Supplemental Information
The Federal Circuit continued its largely deferential treatment of Patent Trial and Appeal Board (PTAB) procedural rulings in Redline Detection, LLC v. Star Envirotech, Inc., 15-1047 (Fed. Cir. Dec. 31, 2015), upholding the PTAB's denial of Petitioner Redline's motion to submit supplemental evidence under 37 C.F.R. '42.123(a), within a one-month window from institution of an inter partes review (IPR). The Federal Circuit also affirmed the PTAB holding that U.S. Pat. No. 6,526,808 (the '808 Patent), was not invalid as obvious under 35 U.S.C. '103. Practitioners should be aware that entry of supplemental evidence after institution of an IPR is not routine, even within the one-month window from institution of the IPR, and remains firmly up to the PTAB's broad discretion.
Procedural Background
The '808 patent relates to methods for generating smoke used to test for the presence and location of leaks in a fluid system, such as the evaporative or brake system of a motor vehicle. In its initial Petition requesting IPR, Redline proposed 12 grounds for invalidity, and the PTAB instituted a trial on two of them. Redline did not provide an expert declaration with its initial Petition. Instead, within a month of the IPR trial being instituted, Redline requested, under 37 C.F.R. '42.123(a), entry of a 60-page expert declaration, supported by its expert's bio and two prior art patents. During oral argument, Redline offered that the primary driving reason for filing the expert declaration under Section 42.123(a), as opposed to with the Petition, “was one of cost savings”. Slip op. at 12, n. 3. The expert declaration purportedly supported Redline's contention that claims 9 and 10 of the '808 patent were obvious in view of prior art. However, the PTAB declined to enter the supplemental information and expunged it from the record. Following a Final Rejection from the PTAB, Petitioner appealed to the Federal Circuit.
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