Submissions of Supplemental Information in IPRs Subject to Extra Requirements

by | Aug 22, 2018 | Evidentiary Issues

Picture of Japanese lantern for article about substitute translation for Japanese prior art reference

By: Amanda Leckman and Carl Kukkonen

A party to an inter partes review may submit supplemental information within one month of institution if the party can show that the supplemental information is “relevant to a claim for which the trial has been instituted.”  37 C.F.R. § 42.123(a).  In order to submit supplemental information after one month, the party must additionally prove: (1) “why the supplemental information reasonably could not have been obtained earlier”; and (2) “that consideration of the supplemental information would be in the interests of justice.”  Id. § 42.123(b).

In Quanergy Systems, Inc. v. Velodyne Lidar, Inc., IPR2018-00256, (PTAB, Aug. 8, 2018), Quanergy, the petitioner, filed a motion to submit a new English translation of “Mizuno,” a Japanese patent application publication, and a declaration attesting to the accuracy of the translation.  The new English translation would replace the original English translation already filed in the proceeding.

The Board determined that Quanergy met the requisite burden and granted the motion to submit supplemental information.  The Board found that Quanergy could not have reasonably obtained the supplemental information earlier.  Quanergy had learned only three days before the one-month deadline that Velodyne desired to depose the translator of Mizuno.  As soon as Quanergy learned that the translator was unavailable for the deposition, it immediately pursued a new translation through a new translator.  Additionally, the Board found that Quanergy’s motion was in the interest of justice.  The Mizuno reference implicated each of the claims on which trial was instituted and served as the primary basis for each of the grounds asserted in the petition.  Furthermore, the supplemental information did not alter the asserted grounds or the evidence presented in support of those grounds.

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Carl Kukkonen

Partner at Jones Day
An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.