PTAB Denies Timely, Relevant Supplement To Petition

By rule, a petitioner may request permission from the Board to submit supplemental information in an IPR proceeding if: (1) the request is filed within one month of the Board's institution decision, and (2) the supplemental information is "relevant to a [patent] claim for which the trial has been instituted." 37 C.F.R. § 42.123(a). As the Board recently demonstrated, however, a petitioner's request for consideration of supplemental information may be denied even if both of these requirements are satisfied. The Board's decision underscores the critical importance of including in an IPR petition the entirety of an invalidity argument and any supporting evidence.

In IPR2017-00028, the petitioner moved—less than one month after institution—to submit certain supplemental information. IPR2017-00028, Paper 22 at 3 (June 13, 2017). Specifically, the petitioner sought to submit five additional exhibits, each related to a French book chapter. Id. at 2. The additional exhibits