Cultec, Inc. v. StormTech LLC, Case IPR2017-00777 (August 22, 2017) (Paper 7)
The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of the original prosecution of the patent at issue).
Petitioner Cultec, Inc. (“Cultec”) filed a petition challenging all claims of U.S. Patent No. 9,255,394 (“the ’394 patent”) based on the following grounds of unpatentability:
|§103||Cobb and Fouss||1-20|
|§103||Cobb and Ellis||1-20|
|§103||Cobb, Fouss, and Ellis||1-20|
|§103||Cobb and November||8|
The Board declined to institute IPR based on its conclusion that the same or substantially prior art or arguments were previously presented to, and considered by, the Office as part of a third party submission under 37 C.F.R. § 1.2907 (“Submission”) during prosecution of the ’394 patent.
The Submission presented Cobb and Fouss to the Office. The Submission included significant argument relating to Cobb, including a claim chart. The Submission also incorporated by reference conclusions that the Office had made about Cobb in an office action issued in a related application (a continuation of the same parent application). The same examiner handled the related application and the application that matured into the ’394 patent. The Submission also asserted that “[a]dditional relevant disclosures are found in Fouss” and other prior art.
The Board found that the Examiner considered Cobb, even though the Examiner did not expressly apply Cobb during prosecution of the ’394 patent, considering the detailed treatment of Cobb in the Submission as well as the Examiner’s signature indicating that “all documents listed above have been considered.” The Board also noted that the Examiner cited and applied Fouss throughout prosecution of the ’394 patent.
Furthermore, the Board concluded that the relevant disclosure of the other prior art cited in Cultec’s petition – Ellis and November – was substantially the same vis-à-vis the challenged claims as prior art already considered by the examiner during prosecution of the application that matured into the ’394 patent.