Timeliness and relevance are not sufficient conditions for automatically granting a motion to submit supplemental information after IPR institution

| January 29, 2016

Redline Detection, LLC. v. Star Envirotech, Inc.

December 31, 2015

Before Wallach, Lourie, and Hughes.  Opinion by Wallach.


The Federal Circuit held that, with regard to the motion to submit supplemental information after the IPR is instituted, the two criteria in section 37 CFR 42.123(a), timeliness and relevance, are not sufficient conditions for automatically granting a motion to submit supplemental information.


In January 2013, Redline filed a corrected IPR petition, requesting review of claims 9 and 10 of US Patent No. 6,526,808B1 (the ‘808 Patent) owned by Star Envirotech, Inc (STAR). The ‘808 Patent had underwent and survived two ex parte reexaminations, with amendment of claim 9 and addition of new claim 10 during the first ex parte reexamination. The IPR was instituted on July 1, 2013. On July 30, 2013, Redline filed a Motion for Supplemental Disclosure of New Exhibits, requesting submission of four pieces of evidence including a sixty-page expert Declaration. In August 2013, the PTAB denied the motion and expunged the submitted evidence from the record. On June 30, 2014, the PTAB issued final decision, finding that claims 9 and 10 of the ‘808 Patent are not obvious. Redline timely appealed.

With regard to the motion to submit supplemental information, the Federal Circuit affirmed the PTAB’s argument that the two criteria listed in section 37 CFR 42.123(a) are not sufficient conditions for automatically granting the motion to submit supplemental information. Section 37 CFR 42.123(a) states that once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with two criteria: timeliness (within one month of the date the trial is instituted) and relevance. Furthermore, section 42.123 (b) and (c) provide that if any of the above two criteria is not met, the motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice. Redline’s motion satisfies the two criteria: the motion was filed within one month of the date the trial is instituted and the submitted information is relevant. However, in the motion, Redline did not make any attempt to justify the submission of an expert declaration after a decision to institute has been made except that the move was cost effective. Redline admitted to the PTAB that it intentionally delayed filing this information because submission of the Declaration at the point after institution of the IPR makes things far less complex because the expert only needs to opine on 2 grounds instituted, instead of 12 grounds as originally submitted in the petition. The Federal Circuit concurs with the PTAB that Redline did not establish a sufficient basis for submitting new evidence and its “supplemental evidence” is in essence something more than just supplemental evidence. Accordingly, the Federal Circuit affirms the PTAB’s decision denying Redline’s motion to submit supplemental information under 37 C.F.R. §42.123 (a).

The denying of the motion to submit supplemental information later proves fatal to Redline’s case. During the IPR trial, because Redline’s Expert Declaration was excluded, STAR’s expert testimony was un-rebutted and almost wholly accepted by the PTAB. On appeal, Redline is arguing for the application of a different PHOSITA standard from the one offered by STAR’s expert and adopted by the PTAB. These arguments are also based upon the Redline’s Expert Declaration that the PTAB excluded. The Federal Circuit hold that Redline’s arguments waived and need not address them.

Substantively, the ‘808 Patent discloses a smoke and clean air generating machine for detecting presence and location of leaks in a fluid system. A partial schematic of the smoke-generating apparatus is depicted below:










Claim 9 of the ‘808 Patent recites a method for generating smoke for use at a volatile, potentially explosive environment comprising “…blowing a supply of non-combustible gas under pressure into the closed smoke producing chamber by way of said gas inlet thereof for creating an inert environment….” The Redline’s petition cites four prior art: US Patent No. 5,107,698 (“Gilliam”), Great Britain Patent No. 1,240,867 (“Stoyle”), Great Britain Patent No. 640,266 (“Pauley”), and 1999 website disclosing potential uses of smoke generators.

The four prior art, as a whole, teaches all the limitations of claim 9 of the ‘808 Patent. However, individually, the four prior art each has a technical gap from claim 9 of the ‘808 Patent. Specifically, Gilliam teaches all limitations of claims 9 and 10 of the ‘808 Patent except that Gilliam uses air instead of inert gas to generate smoke for detecting leaks in fluid system. The smoke generating fluid in Gilliam should preferably be non-flammable and non-toxic. Stoyle discloses a smoke generating device which heating a mixture of oil and CO2 with air for testing ventilation systems or for theatrical effects. Pauley discloses smoke generating device using CO2 or N2 gas with air to generate smoke in an open tube. In Gilliam, Stoyle, and Pauley, air is used wholly or partly for generating smoke. Furthermore, in both Stoyle and Pauley, the smoke is not generated in a closed environment. The PTAB rejected Redline’s arguments regarding reason to combine these references because the arguments were not supported with declaration testimony and the inferences Redline attempted to draw from statements made in Gilliam and Stoyle were rebutted effectively by STAR’s expert. The Federal Circuit found substantial evidence supports the PTAB’s determination that there was no motivation to combine Gilliam and Stoyle because the smoke-generating methods are materially different and are used for materially different purposes. Accordingly, the Federal Circuit affirms.

Take away

  1. Do not wait to submit expert testimony until the IPR is instituted.

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