Error PTAB Denies Motion

Error! PTAB Denies Motion for Supplemental Information to Correct Inadvertent Omission, PTAB Litigation Blog

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In Nanobebe US Inc. v. Mayborn (UK) Limited et al.the PTAB denied a Petitioner’s Motion to submit supplemental information, even though Petitioner argued the information had been inadvertently omitted in the original petition.  The PTAB denied the Motion because it “effectively change[d] the argument and evidence originally relied upon in the petition.”  IPR2023-00465, Paper 21, at 4 (August 17, 2023). In its Motion, the Petitioner sought to submit analysis of claim 23 related to a baby bottle under Ground 1 with respect to a certain “Ishimaru” reference.  The Petitioner stated that the omission of this analysis from the Ground 1 arguments in the petition was inadvertent. Id. at 3, 5. As evidence of the Petitioner’s intent to include the analysis in the petition, the Petitioner pointed to the table of contents in the Declaration showing a placeholder for the claim 23 under Ground 1 but stated “Error! Bookmark not defined.” Id. at 4–5. See Ex. 1005, 4 (Table of Contents). The Petitioner also showed that both the Petition and Declaration referenced the omitted claim 23 in Ground 2, suggesting its exclusion from Ground 1 was inadvertent. Paper 21 at 5. The Patent Owner opposed the request, asserting that the supplemental information went beyond mere supplementation because it included a new substantive argument for a claim in Ground 1 that did not exist in the Petition. Id. at 3.

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