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Patents Inter Partes Review (IPR) Proceeding Supplemental Information

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Error! PTAB Denies Motion for Supplemental Information to Correct Inadvertent Omission

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In Nanobebe US Inc. v. Mayborn (UK) Limited et al., the PTAB denied a Petitioner’s Motion to submit supplemental information, even though Petitioner argued the information had been inadvertently omitted in the original...more

Foley & Lardner LLP

Exception to the Rule? Late Submission of Evidence as Supplemental Information Under 37 C.F.R. 42.123(b)

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In PTAB trials, rules regulate when evidence may be presented by a party to ensure the opposing party a fair opportunity to respond to such evidence. Rule 42.23(b) prohibits a party from filing a sur-reply with “new evidence...more

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PTAB Allows Supplemental Information Request To Fly

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Once the PTAB institutes an IPR, the parties may only add supplemental information to the record by requesting authorization to file a motion to submit the information. See 37 C.F.R. § 42.123 (2022). If authorization is not...more

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No Supplemental Information Permitted To Fix Petition Faults

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On February 28, 2022, in American Well Corporation v. Teladoc Health, Inc. IPR2021-00748, the PTAB denied a motion to submit supplemental information.  In this matter, the Board instituted a trial of all claims and all...more

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Submissions of Supplemental Information in IPRs Subject to Extra Requirements

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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.”...more

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PTAB Considers Efficiency When Deciding Motions to Submit Supplemental Information

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After IPR institution, a party may file a motion to submit supplemental information so long as (1) the party requests authorization to file the motion within a month of the date the trial was instituted, and (2) the...more

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

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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,...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Allows Petitioner to Supplement Record Regarding Publication Date of Prior Art Reference

On October 23, 2017, a Patent Trial and Appeal Board (PTAB) panel granted Petitioner’s Motion to Submit Supplemental Information (“the Motion”) on the publication date of an asserted reference. At the time the Petition was...more

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PTAB Denies Timely, Relevant Supplement to Petition

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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...more

Akin Gump Strauss Hauer & Feld LLP

In Fight Over Recombinant Blood Clotting Factor, PTAB Denies Motion to Submit Supplemental Information

In a case that highlights the importance for petitioners to conduct a thorough prior art search and to anticipate patent owner’s arguments, the PTAB denied a motion to submit supplemental information under 37 C.F.R. §...more

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