Tactical Decision Leads to Supplemental Information Request Denial

By Jesse Wynn and Lisa Furby –

Parties before the PTAB should be careful to submit supplemental materials as soon as practicable. In Extractiontek Sales v. Gene Pools Tech., the PTAB denied a Patent Owner’s motion to submit a deposition transcript from a parallel proceeding as supplemental information.  Extractiontek Sales LLC v. Gene Pools Techs., Inc., IPR2022-00625, Paper 33 (PTAB Mar. 30, 2023).  In denying the motion to file supplemental evidence, the PTAB held that the Patent Owner did not show that the evidence “reasonably could not have been obtained earlier, and that consideration of the supplemental information is in the interests of justice.”

Gene Pools Technologies (“Patent Owner”) filed a sur-reply that included a deposition transcript from a parallel proceeding between the parties. Extractiontek Sales (“Petitioner”) opposed the inclusion of the deposition transcript as a violation of the sur-reply rules, but stipulated that it could be presented as a motion to file supplemental evidence under 37 C.F.R. § 42.123(b).

In its motion, Patent Owner argued that the deposition was taken in the parallel proceeding approximately five months after institution, preventing it from being included sooner. Patent Owner also argued that considering the transcript would be in the interests of justice because it was submitted in response to “nearly five pages of new argument regarding the definition of a POSA in Petitioner’s reply.” Without including the deposition transcript, Patent Owner explained, it may be prejudiced by “inconsistent findings on the definition of a POSA”

The PTAB disagreed. First, it concluded that Patent Owner failed to show that the evidence could not have been obtained sooner, noting that Patent Owner made a tactical decision to cancel the scheduled deposition in this case and never rescheduled it. The PTAB also noted that Patent Owner had not notified Petitioner that it intended to take the later deposition for use in both cases.

Secondly, the PTAB held that Patent Owner failed to show that including the evidence would be in the interests of justice. The PTAB found that the issue of whether Petitioner’s reply included new evidence was not before the PTAB. But even if Petitioner’s reply included new evidence, the PTAB concluded that submitting a deposition transcript from this witness was not an appropriate way to address this new evidence.  This decision makes clear that if a Patent Owner is facing new evidence in the Petitioner’s Reply brief, the Patent Owner should look to the Board’s Trial Practice Guide for the proper recourse.

Takeaway: Parties seeking to introduce supplemental evidence more than a month after trial institution face an uphill battle and should strategize carefully when it comes to leaving out evidence in the early stages of IPRs that they may want to include later.