The circumstances under which the Board will entertain the inclusion of “supplemental evidence” in an inter partes review proceeding remains a moving target. It is worth noting, therefore, the case of Mentor Graphics Corp. v. Synopsys, Inc., IPR2014-00287, wherein the Board denied Petitioner’s efforts to include Patent Owner’s infringement contentions from a co-pending district court litigation involving the same patent. Paper 17 at 2. Petitioner claimed that these contentions reflect Patent Owner’s assessment of the claim scope. Id.
The Board found that the only relevance the contentions have is an alleged inconsistency as compared to arguments made by Patent Owner in the IPR. Id. at 3. They further determined that the contentions were served prior to any substantive discovery in the district court litigation and are supplanted by final infringement contentions as well as the District Court’s Order Construing Claims. Id. The Board, therefore, found that, while the district court’s construction may be informative, the preliminary infringement contentions are too tenuous to be relevant to the Board’s application of the broadest reasonable construction standard. Id. Thus, Petitioner’s Motion to Submit Supplemental Information was denied. The Board however noted that Petitioner can bring these contentions forward in its Reply, if appropriate as rebuttal. Id.