Cultec v. StormTech (IPR2017-00777): § 325(d) after a Third-Party Submission

A third party who knows of relevant art while a competitor’s application is pending can file it with the Office in a preissuance submission under 35 U.S.C. § 122(e) and 37 C.F.R. § 1.290. Cultec, Inc. v. StormTech LLC, IPR2017-00777 (Paper 7, August 22, 2017), shows a cost of doing so: the same art may later be treated as already presented to the Office under 35 U.S.C. § 325(d). It is listed here with the Board’s informative decisions; designations can change, so check the USPTO’s current list of precedential and informative decisions.

The petition challenged all twenty claims of StormTech’s U.S. Patent No. 9,255,394, which covers corrugated, arch-shaped stormwater chambers with sub-corrugations. The patent was in litigation between the parties in the District of Connecticut.

Background

Cultec asserted five obviousness grounds built on a patent to Cobb, alone or with Fouss, Ellis and a reference called November. StormTech asked the Board to deny institution under § 325(d), which allows the Director to reject a petition because “the same or substantially the same prior art or arguments” were previously presented to the Office.

The prosecution record told a clear story. During examination, a third-party submission was filed presenting Cobb, with a claim chart mapping Cobb to each clause of the pending claims. It was filed by the attorney who later served as Cultec’s lead counsel in the IPR. The submission adopted the examiner’s analysis of Cobb from an office action in a sibling application, handled by the same examiner, that had rejected claims over Cobb and another reference. The examiner signed the submission form indicating all listed references had been considered. Fouss, meanwhile, had been applied by the examiner in rejections throughout prosecution.

What the Board decided

The Board denied institution on all grounds under § 325(d). It reasoned step by step:

• Cobb. The substantive disclosure of Cobb, and arguments that the claims were unpatentable based largely on Cobb, had been presented in the third-party submission. The petition’s claim charts were an expanded version of the submission’s chart, adding figures and explanation but citing substantially the same passages.
• Fouss. The examiner had applied Fouss throughout prosecution, so it plainly had been considered.
• Ellis. The disclosure Cultec relied on, discontinuous grooves for strength, was substantially the same as slots disclosed in Brochu, a reference identified in the submission.
• November. The constant-width valley corrugation Cultec drew from November had already been found in Cobb by the examiner in the sibling application, and the submission had adopted that finding.

The Board addressed the November ground even though the patent owner’s § 325(d) argument did not cover it, exercising its own discretion. Having found every ground substantially the same as what the Office had already seen, the Board denied the petition.

Why it matters

Cultec establishes that “presented to the Office” includes art submitted by a third party, not only art cited by the applicant or found by the examiner. A preissuance submission can therefore make later art less useful at the Board, especially when the submission includes a detailed claim chart and the examiner signs off on it.

The decision also shows the Board looking at substance, not labels: a new reference that teaches the same thing as previously considered art can be treated as substantially the same. Later decisions organized this inquiry into factors; see Becton, Dickinson v. B. Braun. For a decision that applied § 325(d) to some grounds but not others, see Unified Patents v. Berman. For how § 325(d) sits beside the institution threshold, see the different threshold standards.

Later developments

The framework for § 325(d) was later restated in Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469 (Paper 6, 2020) (precedential), which asks whether the same or substantially the same art or arguments were presented and, if so, whether the petitioner has shown material error by the Office. The USPTO’s discretionary-denial practice has changed repeatedly, so readers should check current USPTO guidance.

Key takeaways

• Art presented in a third-party preissuance submission counts as previously presented to the Office under § 325(d).
• The Board denied institution where the petition’s charts were essentially an expanded version of the submission’s chart.
• New references that teach the same thing as considered art can be treated as substantially the same.
• Weigh the trade-off between a preissuance submission and a later AIA challenge; check current USPTO guidance on § 325(d).