Proofread Your Petition—Board Denies Motion to File Supplemental Information That Would Address Unintentionally Omitted Claim

Decision

In Nanobebe v. Mayborn,[1] the Patent Trial and Appeal Board (“Board”) denied Nanobebe’s request to submit supplemental information that it allegedly “intended” to include in its petition because it would effectively change the argument and evidence originally relied upon in the petition.

Analysis

37 C.F.R. § 42.123(a) sets forth two requirements for the submission of supplemental information in a PTAB trial proceeding:

1.  A request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted.
2. The supplemental information must be relevant to a claim for which the trial has been instituted.[2]

In its motion, Petitioner argued that it intended to include arguments relating to one of the challenged claims in both Ground 1 and Ground 2, not just in Ground 2, and that it should be permitted to include its analysis of the claim under Ground 1 as supplemental information. Petitioner argued that its original intent was evident because the corresponding declaration included an “Error!” message where the missing analysis should have been.[3]

Although the Board determined that petitioner’s request was timely and that “the information appears relevant to a claim instituted at trial,”[4] the Board denied the request because it would ultimately “bolster” the arguments in the petition by providing analysis that was not originally presented.

Citing 37 C.F.R. § 42.104(b) the Board determined that the “petition must identify, with particularity, the evidence supporting the challenge to each claim” and that denying Petitioner’s motion, which “effectively changes the argument and evidence originally relied upon” in the petition, “is in accord with the statutory requirement.”[5] Whether the information was “inadvertently omitted or not” was irrelevant.[6]

Take Away

The Board cannot “simply correct errors and omissions in a petition using supplemental information that results in the addition of a new analysis.”[7] Thus, even if supplemental information meets the requirements set forth in 37 C.F.R. § 42.123(a), it can still be denied entry if it adds new arguments that were not included in the initial petition.

Endnotes

[1] IPR2023-00465, Paper 21 (Aug. 17, 2023)

[2] 37 C.F.R. § 42.123(a).

[3] Nanobebe, IPR2023-00465 at 4.

[4] Id. at 3.

[5] Id. at 4

[6] Id.

[7] Id. at 5