Tactical Decision Leads To Supplemental Information Request Denial

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