37 CFR § 42.64(b)(2): Supplemental evidence. The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.
As a follow up to our post regarding issues that have arisen to date regarding supplemental evidence, it is worth noting two recent PTAB decisions in which the proper procedure for introducing supplemental evidence in response to an objection was discussed. In Gnosis SPA, et al. v. S. Ala. Med. Sci. Found., IPR2013-00116 (Paper 29), the Board instructed that evidence provided in response to an evidentiary objection should not be filed. Instead, that evidence should be served on the opposing party and then, in the event the opposing party files a motion to exclude evidence, the party may seek authorization to file an opposition to the motion to exclude and to file its supplemental evidence. Order at 3.
In another decision relating to the filing of supplemental evidence, in Nuvasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206 (Paper 23), Patent Owner sought guidance regarding the filing of objections received from Petitioner to evidence set forth in the Patent Owner Preliminary Response. The Board advised that Patent Owner need not serve supplemental evidence to those objections because such evidence can be presented in the formal response to the Petition. To that end, the Board noted that “[t]he arguments and evidence that a patent owner makes and relies on for its full response may be quite different from the arguments and evidence it relied on during the preliminary proceeding. This is in contrast to petitioner’s petition and evidence. Once a trial is instituted, a a petitioner is not automatically afforded another opportunity to brief its case or to submit evidence that it should have submitted in support of its petition.” Order at 2-3 (See also note 3: “While a petitioner may seek to file supplemental evidence, it must do so by way of a motion and it must seek authorization to file such a motion. 37 CFR § 42.123.”).