In Redline Detection v. Star Envirotech, the Federal Circuit has affirmed (1) the PTAB substantive determination that Star’s patent claims are not invalid as obvious and (2) the PTAB procedural refusal to allow Redline to submit a post-institution expert declaration in its attempt to challenge the patent.
On procedure, the Federal Circuit found that the Patent Office must be given deference in interpreting its own regulations regarding PTAB process and that the PTO’s rules make sense as they are designed to encourage submission of “all of the efidence that supports the ground of unpatentability” at the petition stage. Here, although the PTAB rules do allow for submission of supplemental information – the PTAB was justified in denying the submission here since the petitioner gave no reason for the delayed submission other than cost-savings.
Although the PTAB rules (§ 42.123) suggest that supplemental filings may be made within one-month of a petition being granted – that simply might not work in many cases. Thus, this case stands for the proposition that, even when timely filed within the one-month deadline, a motion to submit supplemental information must be justified beyond merely being “relevant.” More broadly, the result here repeats the conventional wisdom that inter partes reviews are generally won/lost on the first-punch.
Star’s patent relates generally to the abstract idea of generating leak-identifying smoke for use in volatile environments such as a vehicle brake-system. On the merits, the PTAB found that the submitted prior art did not render the particularly challenged claims obvious.
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 Redline Detection, LLC v. Star Envirotech, Inc., App. No. 2015-1047 (Fed. Cir. 2015), appealed from the Patent Trial Appeal Board’s final decision in IPR2013-00106.
 Claims 9 and 10 of U.S. Patent No. 6,526,808.
 See 37 C.F.R. § 42.123(a) (2012).