In general, all the evidence a party seeks to rely upon in an inter partes review must be contained in either the Petition (for Petitioner) or Patent Owner Response (for Patent Owner).  37 C.F.R. § 42.123 (b), however, allows for the introduction of supplemental evidence, if such introduction is in the interests of justice.  The Board granted such a request in Cyanotech Corporation v. Board of Trustees of the University of Illinois, IPR2013-00401, Paper 41, allowing two supplemental documents to be added to the IPR.  Given the difficulty of meeting the “interests of justice” standard, we thought it worthwhile to discuss the rationale of this decision.

Pursuant to 37 C.F.R. § 42.123 (b), a motion to submit supplemental information must demonstrate why the information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests of justice. Id. Patent Owner, in seeking to introduce supplemental evidence, argued that the information at issue could not have been reasonably obtained earlier because the documents at issue were part of a litigation production consisting of over 100,000 pages. Id at 3.

Petitioner argued that the documents had been produced several months before the Patent Owner Response was due and that Patent Owner’s failure to submit them with the Response was mere attorney negligence. Id. Petitioner further argued that it would suffer prejudice because it would not have time to prepare for the deposition of Patent Owner’s witness, to locate a rebuttal expert, and to prepare its reply.

Given the extensive nature of the document production, the fact that the supplemental information was limited and bore directly on Petitioner’s statements in the IPR, and that any prejudice to the Petitioner was negligible, the motion to submit supplemental information was granted. Id.