Cultec, Inc. v. Stormtech LLC

Informative decision only: persuasive authority, not binding precedent. When the same or substantially the same prior art or arguments in an IPR petition were previously presented to the Office, including through a third-party submission under 37 C.F.R. § 1.290 that the examiner signed as considered, the Board may exercise discretion under 35 U.S.C. § 325(d) to deny institution. Here the Board denied institution of all grounds, including a ground the patent owner did not argue under § 325(d), because the petition's references and claim charts were substantially the same as what the examiner had already considered. No prior precedent directly addressed this issue in the text; the decision cites none and applies the second sentence of § 325(d) on its own terms. For a petitioner, a third-party submission under 37 C.F.R. § 1.290 can count as presenting art and arguments to the Office, so a petitioner who filed a claim chart there (here, the same counsel) may be held to it when it later files a petition with an expanded version of that chart. For a patent owner, the decision shows that a § 325(d) argument can succeed by pointing to the examiner's signed consideration of the submission, the examiner's earlier use of the art in a related application, and the near-identity of the charts. The Board relied on the statute, 35 U.S.C. § 325(d), and 37 C.F.R. § 42.4(a), and cited no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: The Board applied the second sentence of 35 U.S.C. § 325(d): in determining whether to institute, the Director may take into account whether, and reject the petition because, the same or substantially the same prior art or arguments previously were presented to the Office. It asked whether Cobb, Fouss and the other cited references, and the arguments based on them, were previously presented to the Office. The text states no numbered factors or multi-factor test. TRIGGERING FACTS: Petitioner's own counsel filed a Third Party Submission under 37 C.F.R. § 1.290 in the application that became the patent. It presented Cobb with a claim chart against the pending claims and adopted the statement of relevance from an Office Action in a related application. The examiner signed it as considered, with no references lined through, and had applied Cobb in the related application. The petition's charts were an expanded version of the submitted chart. Fouss was applied throughout examination. Ellis and November were found substantially the same as Brochu and Cobb, which were presented to the Office. KEY QUOTE: "Based on the analysis above, we determine that the substantive disclosure of Cobb and arguments why claims in the ’503 application that matured into the ’394 patent were not patentable based, in substantial part, on Cobb previously were presented to the Office in the Third Party Submission." (Paper 7, p. 11) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Before filing a petition, check the prosecution history, including any third-party submissions the petitioner or its counsel filed. If the petition relies on art or charts already presented to the Office, explain why the Board should still institute. A patent owner should cite the examiner's signed consideration and compare the charts in its preliminary response. It should also address every ground, since the Board reached an unargued ground on its own.