Cultec, Inc. v. Stormtech LLC
Paper No. 7, Aug. 22, 2017
IPR2017-00777 (Patent 9,255,394 B2)
Petitioner Cultec petitioned for inter partes review of claims 1-20 of U.S.P.N. 9,255,394 B2. Patent Owner Stormtech filed a Preliminary Response. Institution was denied.
In considering 35 U.S.C. § 325(d), the Board can exercise its discretion and deny IPR trial where an Examiner previously considered the same prior art and arguments during prosecution that were submitted in the form of a Third Party Submission.
Petitioner asserted that the ‘791 claims were obvious in view of certain prior art (Cobb; Fouss; Brochu). See Paper 7, p. 7.
However, Patent Owner in its Preliminary Response argued that the U.S. Patent Examiner during prosecution already considered the Cobb and Fouss references, which were cited in a Third Party Submission (37 C.F.R. § 1.290), and the claims were allowed. See Paper 10, p. 9.
The Board noted that Petitioner’s lead counsel in the IPR proceeding was listed as the attorney that filed the Third Party Submission. See Paper 7, p. 8.
Cobb was discussed extensively by the Examiner in an Office Action, and the Third Party Submission was considered by the Examiner. See Paper 7, pp. 9-10. The Third Party Submission even had a detailed claim chart comparing Cobb with the pending claims. The IPR Petition contains substantially the same chart from the Third Party Submission. Fouss and Brochu were also cited in the Third Party Submission.
35 U.S.C. § 325(d) states that “… the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” See Paper 7, pp. 7-8.
The Board agreed that the Petitioner’s prior art and arguments were already substantially considered by the Examiner, where such prior art and arguments were previously presented in the form of the Third Party Submission. See Paper 7, p. 13. Thus, institution was denied.
A copy of the PTAB order can be found here.