ORDER Denying Petitioner's Request for Authorization to File a Motion to Submit Supplemental Information, 37 C.F.R. § 42.123
Summary: In evidentiary issues, parties must take care to distinguish between admissibility of evidence and sufficiency of evidence; a request to file supplemental information under 37 C.F.R. § 42.123(a) must be made within one month of the date of institution, but its grant is not automatic and a sufficient showing must be made to the Board as to why the supplemental evidence should be provided at that time.
In response to Petition, Patent Owner filed an objection to a prior art reference as "inadmissible hearsay" and as "not properly authenticated." Petitioner filed a motion with he Board seeking leave to file supplemental information under 37 C.F.R. § 42.123(a) to provide evidence that the prior art reference in question was publicly available.
The Board denied the motion, noting that the Patent Owner's objection did not go to the objection raised by the Patent Owner. Instructively, the Board stated:
"Petitioner conflated two different challenges: (1) the admissibility of evidence (e.g., authenticity or hearsay), which requires the objecting party to file an objection to evidence under 37 C.F.R. § 42.64(b); and (2) the sufficiency of evidence to prove a particular fact (e.g., whether the evidence is sufficient to demonstrate that a reference is a printed publication under § 102(b)). ee Groupon, Inc. v. Blue Calypso, LLC, Case CBM2013-00033, slip op. 3-4 (PTAB May 12, 2014) (Paper 29); Bloomberg Inc. v. Markets-Alert Pty. Ltd., Case CBM2013-00005, slip op. 5 (PTAB Nov. 15, 2013) (Paper 56); see also Valeo North America, Inc. v. Magna Electronics, Inc., Case IPR2014-00220, slip op. 10-11 (PTAB May 28, 2015) (Paper 59) (Arguing that a reference is not prior art under § 102(b), as it was not publicly accessible, is a challenge to the sufficiency or weight to be given to the reference.)."
The Board determined that the motion to submit supplemental information was not appropriate at this juncture in the proceeding, and if Patent Owner later challenged the sufficiency of the evidence with a motion to exclude, the previously-served supplemental evidence could be filed in opposition.