PTAB Denies Request to Submit Supplemental Information on Skill Level of POSITA

By Geoffrey Gavin

In a recent decision, the PTAB denied a petitioner’s request for authorization to file a motion to submit supplemental information directed to the level of ordinary skill in the art.  Ooma, Inc. v. Deep Green Wireless LLC, IPR2017-01541, Paper 14 (PTAB Jan. 23, 2018).

In this IPR, the PTAB instituted trial on obviousness grounds on all of the claims subject to trial.  Id. at 2.  Following institution, the petitioner asked the PTAB for permission to file supplemental information on the level of ordinary skill in the art.  Id. at 2.  37 C.F.R. § 42.123(a) provides that, after institution of trial, a party may file a motion to submit supplemental information if it meets two requirements: (1) a request to authorize the motion must be made within one month of the institution date, and (2) the information must be relevant to a claim for which the trial has been instituted.

The patent owner, in its preliminary response, had argued that the petition did not explain the level of ordinary skill in the art and that this required the PTAB to deny institution on all of the proposed obviousness grounds.  Ooma, IPR2017-01541, Paper 14 at 3; Ooma, IPR2017-01541, Paper 8 at 7-8 (Dec. 18, 2017) (institution decision).  The PTAB rejected the patent owner’s argument and instituted trial on several obviousness grounds.  Ooma, IPR2017-01541, Paper 8 at 8 (“On the present record and at this point, we do not agree that the lack of a specific proposal in the Petition for a definition of one of ordinary skill in the art is fatal to the asserted obviousness grounds of the Petition, …”).

Despite the institution outcome, the petitioner felt the need to attempt to supplement the record in its petition on the issue of the level of ordinary skill in the art.  Ooma, IPR2017-01541, Paper 14 at 2.  The petitioner argued that the filing of supplemental information should be authorized because it fulfilled both requirements of § 42.123(a) and the additional evidence would further develop the issue in advance of the additional filings to come under the scheduling order.  Id.  The PTAB rejected the petitioner’s argument and denied its request for authorization to file the motion.  Id. at 3-4.

The PTAB noted that it is entitled to exercise its discretion even when the two requirements of § 42.123(a) are met because those are “additional requirements that must be construed within the overarching context of the PTAB’s regulations governing IPR and general trial proceedings [sic].”  Id. at 3 (quoting Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 446 (Fed. Cir. 2015)).  In this case, the petitioner did not sufficiently explain why the supplemental information on skill level could not have been filed with the petition.  Id.  The PTAB stated:

Supplemental information is not intended to provide a petitioner an advantageous “wait-and-see” opportunity to use a patent owner’s preliminary response and our decision on institution in order to refine or bolster petitioner’s position.  … [I]n light of the goal of securing the just, speedy, and inexpensive resolution of every proceeding, we decline at this point to allow Petitioner to add supplemental testimony regarding the level of ordinary skill in the art.

 Id. at 3-4.