Timeliness and relevancy alone are not sufficient to ensure entry under 37 C.F.R. § 42.123(a) of supplemental information for IPR proceedings where the information reasonably could have been submitted with the IPR petition itself. Here, for example, the later submission of supplemental information narrowly pertaining to only the subset of ultimately selected grounds of rejection (for efficiency purposes) was found to be improper because it could have been submitted earlier, even though the submission was in compliance with the lone timeliness and relevancy conditions set forth in § 42.123(a). It may therefore be best to avoid withholding any relevant arguments or evidence that could be included in an IPR petition even if it would be more efficient to submit that information later once the PTO selects the grounds of rejection it intends to pursue.
Background / Facts: The patent on appeal here from inter partes review (IPR) proceedings at the PTO is directed to methods of generating smoke for use in detecting leaks in volatile and explosive environments. Following its initial IPR petition, the petitioner filed a motion to submit supplemental information under 37 C.F.R. § 42.123(a) that sought to introduce four new exhibits relevant to the two (out of twelve) grounds of rejection ultimately selected by the PTO. The petitioner acknowledged that this was done simply for efficiency purposes to avoid the expense and complexity of compiling evidence for any non-selected grounds.
Issue(s): Whether the PTO can still require a showing of good-cause for entry of supplemental information under § 42.123(a)—as in subsections (b) and (c)—even when subsection (a) sets forth only basic timeliness and relevance conditions.
Holding(s): Yes. “The PTAB’s interpretation of its governing regulations is not plainly erroneous … [N]othing in § 42.123 or its regulatory history expressly states or implies that all elements of the [PTO’s] mandate are incorporated into § 42.123(a) and that it must be read to the exclusion of the remaining subsections in that regulation and 37 C.F.R. Part 42, Subpart A.” Rather, timeliness and relevancy provide only “additional requirements that must be construed within the overarching context of the [PTO’s] regulations governing IPR and general trial proceedings.”