PTAB Grants Patent Owner’s Motion to Submit Supplemental Information Despite Delay

February 23, 2017 — On February 21, 2017, the Patent Trial and Appeal Board (“the Board”) granted the patent owner’s Motion to Submit Supplemental Information for each of the three Inter-Parte Review (IPR) proceedings directed to the same patent, U.S. Patent No. RE44,644, entitled, “Method and Apparatus for Spin-Echo-Train MR Imaging Using Prescribed Signal Evolutions.”  The patent owner, University of Virginia Patent Foundation, had “inadvertently omitted” an oath of its expert from his declaration and sought to file the oath as supplemental information five months later.  While “[i]n most situations, a delay of this magnitude . . . would result in denial of the motion,” the Board granted the motion considering the relevance of the declaration and the lack of unfair prejudice against Petitioner General Electric Company (GE).  The declaration bears on the issue of whether one of the prior art references asserted by GE is prior art under 35 U.S.C. § 102(a).  With respect to the lack of unfair prejudice against GE, the Board noted that the oath as supplemental information adds “no new substantive testimony” to the original declaration and that GE had been aware of the substantive content of the declaration.

The three IPR proceedings are IPR2016-00357, IPR2016-00358, and IPR2016-00359.

By: Chika Seidel