Exception to the Rule? Late Submission of Evidence as Supplemental Information Under 37 C.F.R. 42.123(b)

Foley & Lardner LLP Partner Joe Meara and Associate Aude Peden authored the article, “Exception to the Rule? Late Submission of Evidence as Supplemental Information Under 37 C.F.R. 42.123(b),” in the November/December issue of IP Litigator, published by Wolters Kluwer.

In the article, the authors discuss one of the rules regulating when evidence may be presented by a party to ensure the opposing party a fair opportunity to respond in PTAB trials, Rule 42.23(b). This rule prohibits a party from filing a sur-reply with “new evidence other than deposition transcripts of the cross-examination of any reply witnesses.”

Meara and Peden discuss Rule 42.23(b) in light of a recent Board ruling where this blanket prohibition against new evidence was overcome, Group III International, Inc. v. Targus International LLC. They provide a background of the case, discuss the two-prong test applied by the court, and the key takeaway from the ruling.