Unhappy with the Board’s claim constructions, Patent Challenger in Rackspace US, Inc. and Rackspace Hosting, Inc. v. PersonalWeb Technologies, LLC and Level 3 Communications, (IPR2014-00057, IPR2014-00058, and IPR2014-00062) sought to file a motion to submit supplemental information (specifically an expert declaration) to address certain claim constructions.  The Board denied the motion because, among other things, allowing such late entry of evidence would compromise the efficient and inexpensive resolution of inter partes reviews.

Patent Challenger argued that allowance of the expert declaration in support of its own claim constructions was proper because the request was made within one month from the institution date and the information would be relevant to the claims at issue. Patent Owner countered that such supplemental information should have been presented at the time of filing the original petition, and that such a late submission of evidence regarding claim construction would negatively affect Patent Owner, who was in the midst of preparing for discovery and response.

The critical factor in the Board’s decision was the goal of having the proceeding completed within one year of institution (35 USC § 316(a)(11)). The Board also looked to 37 CFR § 42.1(b) which stipulates that the Board’s rules are to be construed to secure efficient and inexpensive resolution of each proceeding. Finding that allowing submission of the supplemental expert declaration would inhibit timely filing of Patent Owner’s responses in each proceeding, the Board refused to allow the supplementary evidence.

The Board continued on to state that submission of supplemental evidence is an improper mechanism for challenging claim construction. Rather, if Patent Challenger was dissatisfied with the Board’s claim construction, Patent Challenger should have filed for rehearing within 14 days of the decision on institution. The Board also agreed with Patent Owner that the proper time to submit an expert declaration in support of claim construction was with the filing of the petition. Lastly, the Board noted that Patent Challenger can challenge the claim constructions in its reply, so there was no reason to allow supplemental information.

Patent Challenger’s last argument was based on two past proceedings in which expert testimony related to access and authenticity of prior art references was allowed as supplemental information. However, the Board found that the two cases were not analogous, as they dealt with issues related to the prior art, not claim construction. Therefore, the Board did not allow submission of supplemental information in support of Patent Challenger’s preferred claim construction.