Thursday, January 07, 2016

CAFC affirms PTAB in Redline v. Star and discusses the details of the submission of supplemental information in an IPR

The issues:

On appeal, Redline argues the PTAB erred in denying
its motion to submit supplemental information for three

First, Redline argues the regulatory history of
37 C.F.R. § 42.123 demonstrates the USPTO has already
incorporated its statutory mandate into the three tier
scheme of subsections (a) through (c) of that regulation
and, thus, the PTAB cannot “mix and match” these requirements
at its discretion.

Second, Redline argues the
plain language of § 42.123(a) precludes the imposition of
any additional criteria beyond the plain language of the

Finally, Redline argues the PTAB’s decision
was arbitrary and capricious because Petitioners in other
IPR proceedings were allowed to submit supplemental

The CAFC noted:

Congress’s enactment of the Leahy-Smith America
Invents Act (“AIA”), Pub. L. No. 112–29, § 6(a)–(c), 125
Stat. 284, 299–305 (2011) (codified in part at 35 U.S.C.
§§ 311–319) replaced inter partes reexamination with IPR
for requests filed on or after September 16, 2012. Compare
35 U.S.C. §§ 311–318 (2006), with 35 U.S.C. §§ 311–
319 (2012).2 The AIA authorized the USPTO to promulgate
regulations governing the administration of IPR


The PTAB found Redline’s IPR Petition did not rely
on an expert declaration in support of its position. J.A. 4
(PTAB Order–Conduct of the Proceeding); see also J.A.
1078–1142 (corrected petition to institute IPR). Rather,
Redline’s Motion for Supplemental Disclosure of New
Exhibits sought to introduce four new exhibits: (1) a sixtypage
declaration of Redline’s expert, Dr. Michael St.
Denis; (2) the resume of Dr. St. Denis; (3) U.S. Patent No.
3,250,723; and (4) U.S. Patent No. 3,432,439. J.A. 2. The
PTAB denied Redline’s Motion, noting Redline did not
make “any attempt to justify the submission of an expert
declaration after filing its petition and after a decision to
institute has been made except to note that the move was
cost effective . . . .”3 J.A. 4. The PTAB also found that
Redline did not allege “any of the arguments or evidence
in the newly submitted declaration [was] information that
reasonably could not have been submitted with the Petition.”
J.A. 4. “The [PTAB] chose two of twelve grounds
proposed by Redline, thus Redline could have submitted
expert opinion testimony to support those grounds with
the petition itself.”

Of rules of statutory construction:

Redline’s arguments rely, in part, on rules of statutory
construction—e.g., (1) the exclusion of particular
language from one subsection of a statute that was included
in other subsections means “it is generally presumed
that Congress acts intentionally and purposefully
in the disparate inclusion or exclusion,” Keene Corp. v.
United States, 508 U.S. 200, 208 (1993) (internal quotation
marks and citation omitted); and (2) words that
appear in different statutes that are adopted during the
same legislative session creates a negative implication
that is “strongest when the portions of a statute treated
differently had already been joined together and were
being considered simultaneously when the language
raising the implication was inserted,” Lindh v. Murphy,
521 U.S. 320, 330 (1997) (citation omitted). The Supreme
Court has found that canons of statutory construction “are
not mandatory rules. They are guides that ‘need not be
conclusive.’” Chickasaw Nation v. United States, 534 U.S.
84, 94 (2001) (quoting Circuit City Stores, Inc. v. Adams,
532 U.S. 105, 115 (2001)). Rather these guides “are
designed to help judges determine the Legislature’s intent
as embodied in particular statutory language.” Id.
The PTAB’s interpretation of its governing regulations
is not plainly erroneous. Its interpretation of
§ 42.123(a) is consistent with the regulation’s plain language
and the USPTO’s intent in promulgating § 42.123.
The plain language of § 42.123(a) does not exclude the
application of other general governing regulations. The
guiding principle for the PTAB in making any determination
is to “ensure efficient administration of the Office and
the ability of the Office to complete IPR proceedings in a
timely manner.” J.A. 18–19; see 35 U.S.C. § 316(b).
Requiring admission of supplemental information so long
as it was timely submitted and relevant to the IPR proceeding
would cut against this mandate and alter the
intended purpose of IPR proceedings.

Redline’s interpretation of the regulatory history does
not warrant a different conclusion.

Footnote 4:

Redline also cites Norman International, Inc. v.
Toti Testamentary Trust, IPR2014-00283, Paper 29
(P.T.A.B. Sept. 29, 2014) (addressing Petitioner’s submission
of supplemental information to confirm the accuracy
of the translation of a Japanese Patent Application Publication
that was submitted in the IPR Petition); Brose
North America v. UUSI, LLC, IPR2014-00416, -417,
Paper 16 (P.T.A.B. Sept. 16, 2014) (addressing Petitioner’s
submission of a U.S. patent and patent publications
for claim construction); and Palo Alto Networks, Inc. v.
Juniper Network, Inc., IPR2013-00369, Paper 37 (P.T.A.B.
Feb. 5, 2014) (addressing Petitioner’s submission of
supplemental information to establish that prior art cited
in the IPR Petition qualified as a prior art printed publication).
Appellant’s Br. 42–43. However, Pacific Market
International presents the scenario most similar to the
present proceeding

The CAFC noted of Palo Alto:

In Palo Alto Networks, the Petitioner sought to submit
supplemental information that would establish the cited
prior art within the Petition did in fact qualify as a prior
art printed publication. The PTAB found the information
was not intentionally withheld nor did allowing this
information limit the PTAB’s ability to timely complete
the proceeding. Palo Alto Networks, Paper 37 at 4. The
PTAB did agree that it must decide this Motion not solely
on § 42.123 requirements, but also in light of 37 C.F.R.
§ 42.1(b) (i.e., the just, speedy, and inexpensive resolution
of proceedings). Id. Redline relies on this case because
the PTAB determined whether information could have
been obtained earlier was a requirement under
§ 42.123(b) and (c), not (a). Appellant’s Br. 43; see id. at
49–50. Redline also relies on this case because the PTAB
found the submission of the supplemental information
would not prevent the PTAB from satisfying its mandate
under § 42.1(b). Id. at 43.

Redline’s reliance is misplaced.

Footnote 6:

Redline failed to follow the proper procedure during
the IPR proceeding. Once the Petition is filed, the
Petitioner may reply: 1) after institution of the proceeding;
and 2) after the patent owner has filed an opposition
to the Petition. See Final Rule, 77 Fed. Reg. at 48,766
(citing 35 U.S.C. § 316(a)(8)). At that time, a petitioner
“may only respond to arguments raised in the corresponding
opposition.” Id. at 48,768 (citing 37 C.F.R. § 42.23).
Any new issues raised in the reply will not be considered.
“Examples of indications that a new issue has been raised
in a reply include new evidence necessary to make out a
prima facie case for the patentability or unpatentability of
an original or proposed substitute claim, and new evidence
that could have been presented in a prior filing.”

Of Pacific Market:

Redline’s characterization of Pacific Market International
is inaccurate and misleading. The Panel’s decision
expressly stated 37 C.F.R. § 42.123(a) is not a routine
avenue to pursue, nor does the regulation require an
automatic acceptance of, supplemental information. See
Pac. Mkt. Int’l, Paper 23 at 3. This is the exact opposite of
having an obligation to allow the supplementary information.
Redline fails to appreciate the stark difference
between the short, supplemental expert report, which the
PTAB reasonably permitted in Pacific Market International,
and its de novo expert report submitted for the
first time. Pacific Market International is inapposite.



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