Supplementing the Record in PTAB Trials with Supplemental Information

The record in a PTAB trial is mostly fixed by the petition, but new information sometimes surfaces after institution. A reference’s publication date may need more support, a related proceeding may produce relevant testimony, or a party may discover a document it could not find earlier. The Board’s rules provide a specific path for adding that information: a motion to submit supplemental information under 37 C.F.R. § 42.123.

This article explains how that rule works and how it differs from the similarly named supplemental evidence procedure.

The rule

Section 42.123(a) sets two requirements for a timely motion:

• Timing. The request for authorization to file the motion is made within one month of the date the trial was instituted.
• Relevance. The supplemental information is relevant to a claim for which the trial has been instituted.

As with most motions in AIA trials, a party first asks the Board for authorization, typically by email leading to a conference call.

Late requests

A request made more than one month after institution faces a higher bar. Under § 42.123(b), the party must show why the supplemental information reasonably could not have been obtained earlier and that consideration of it would be in the interests of justice. Information that was available all along, but not used, is unlikely to meet that standard.

Information outside the proper path

Information that does not come in through a proper procedural channel may be excluded or disregarded. The available channels include a motion for supplemental information, a reply exhibit within the permitted scope of a reply, and supplemental evidence responding to an objection.

Supplemental information vs supplemental evidence

The two terms sound alike but serve different purposes.

	Supplemental information	Supplemental evidence
Rule	§ 42.123	§ 42.64(b)(2)
Purpose	Add new relevant information to the record	Cure an evidentiary objection
How it starts	Motion, with prior Board authorization	Served in response to an objection
Timing	Within one month of institution, or later with a stronger showing	Within ten business days of service of the objection
Filed with the Board?	Yes, if the motion is granted	Served on the objecting party; may be filed later, for example with an opposition to a motion to exclude

Supplemental evidence is narrow. It is typically used to add authentication, foundation or a business-records declaration after the other side objects. It is discussed further in evidentiary considerations in PTAB trials.

What supplemental information cannot do

It cannot change the grounds

The Board will not allow a petitioner to use supplemental information to change the grounds of unpatentability set out in the petition. A petitioner cannot add a new reference to create a new combination, or substitute a stronger reference for a weak one, by calling it supplemental information. The petition defines the trial.

The Board has been more receptive when the information supports a ground already in the petition, for example evidence that a cited reference was publicly accessible before the critical date, rather than shifting the theory of the case.

It does not reset the briefing sequence

Supplemental information must fit within the trial schedule. The Board considers whether admitting it would prejudice the other party or disrupt the schedule, and it may allow the opposing party an opportunity to respond. Because the final written decision is generally due within one year of institution, a late motion can be harder to accommodate.

Factors the Board weighs

Board decisions on these motions commonly consider:

• Timeliness: whether the request came within one month of institution, and if not, why not.
• Relevance: whether the information bears on an instituted claim.
• Effect on the grounds: whether it supports an existing ground or effectively adds a new one.
• Prejudice: whether the opposing party can fairly respond within the schedule.
• Availability: whether the information could reasonably have been found earlier.

Relationship to replies and sur-replies

A reply exhibit that properly responds to the patent owner’s arguments does not require a § 42.123 motion. Evidence that goes beyond the scope of the reply, however, can be disregarded. The rules on reply scope are discussed in getting the last word in PTAB trials.

Key takeaways

• Under § 42.123(a), a party may move to submit supplemental information if it requests authorization within one month of institution and the information is relevant to an instituted claim.
• Later requests must show the information reasonably could not have been obtained earlier and that considering it is in the interests of justice (§ 42.123(b)).
• Supplemental information is different from supplemental evidence served under § 42.64(b)(2) to cure an objection.
• Supplemental information cannot be used to change the grounds of the petition.