Several weeks ago, the United States Court of Appeals for the Federal Circuit issued a decision in Redline Detection, LLC v. Star Envirotech, Inc., relating to an inter partes review (IPR) challenge brought by Redline challenging the validity of certain patent claims of U.S. Patent No. 6,526,808 (the “’808 patent”).
After deciding to institute the IPR, the Patent Trial and Appeal Board (PTAB) found in favor of the patent owner. Redline appealed the decision of the PTAB to the Federal Circuit, arguing that it was improperly denied the opportunity to submit supplemental information under 37 C.F.R. §42.123(a) and that the PTAB erred with respect to finding that claims 9 and 10 of the ‘808 patent were not invalid.
The ‘808 patent, owned by Star Envirotech, relates to methods of generating smoke for use in volatile and explosive environments. More specifically, the ’808 patent describes methods for generating smoke that enables the presence and location of leaks in a fluid system to be accurately and visually detected depending upon rate of the air flow through the fluid system under test and whether smoke escapes from the system. The invention allows for the more accurate testing of whether automobile emissions are leaking into the environment.
While patent claims surviving an obviousness challenge both at the PTAB and Federal Circuit is interesting, even sadly unique, the compelling part of this decision relates to the submission of supplemental information. On appeal, Redline argued the PTAB erred in denying its motion to submit supplemental information.
The AIA authorizes the filing of supplemental information with the PTAB during the course of an IPR, See 35 U.S.C. § 316(a)(3), and the USPTO promulgated regulations pursuant to that authority. In particular, 37 CFR 42.123(a) allows for supplemental information to be submitted within one month of the institution of the trial, and further requires that the information must be relevant to a patent claim instituted for trial.
In this case, the PTAB refused entry of the timely filed supplemental information because Redline did nothing to justify submitting it after filing the initial IPR petition and even after the institution decision was made, other than to say that submitting it then was cost-effective. The PTAB pointed out that the authorization to submit supplemental information under 42.123 does not require the PTAB to accept such information even if it is timely, noting that the moving party bears the burden in all cases to demonstrate entitlement to the relief. Thus, the PTAB reads the right under 35 U.S.C. § 316(a)(3) and 37 CFR 42.123(a) as the right to submit a motion, but not a right for the motion submitting to be granted or substantively considered.
Writing for the panel, Judge Wallach agreed with the PTAB, saying that this interpretation was not plainly erroneous. Judge Wallach was joined in the decision by Judges Lourie and Hughes.
Redline also argued that the PTAB’s decision to refuse the supplemental information deviated from its previous decisions allowing supplemental information in Palo Alto Networks and Pacific Market International. Again, the Federal Circuit found this argument unpersuasive.
Redline asserted that its submission of Dr. St. Denis’s 60-page declaration was identical to the type of evidence submitted in Pacific Market International and, therefore, the PTAB in this case acted in an arbitrary and capricious manner. The Federal Circuit found that characterization of Pacific Market International disingenuous. In Pacific Market International, the supplemental information accepted was a short, supplemental expert report, not a de novo 60-page expert report.
With respect to Palo Alto Networks, the PTAB allowed the submission of supplemental information there specifically because the patent owner had already received the information filed under § 42.123(a) as a part of the Petitioner’s response to the Patent Owner’s objections. Furthermore, the supplemental information filed did not change the grounds of unpatentability, nor did it change the evidence initially presented in the IPR Petition.
Tags: CAFC, Federal Circuit, Inter Partes Review, IPR, patent, patents, post grant proceedings, supplemental information, USPTO
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