In Cultec, Inc. v. StormTech LLC, IPR2017-00777, Paper 7 (Aug. 22, 2017), the Patent Trial and Appeal Board (Board) denied an inter partes review because the same or substantially the same prior art or arguments were said to have been previously presented to the Patent Office during ex parte prosecution of the challenged patent by way of a third-party submission under 37 C.F.R. § 1.290. In addition to other disadvantages associated with third-party submissions, such as providing the patent applicant an opportunity to address the submitted art in an ex parte context, would-be petitioners also need to consider that such a submission could foreclose a future inter partes review. The Cultec decision (Decision) also highlights the unpredictability of any particular panel in exercising its discretion under 35 U.S.C. § 325(d) to deny a petition.
In this case, the petitioner challenged claims 1-20 of U.S. Patent No. 9,255,394 (the ’394 patent) as obvious over primary reference Cobb in view of secondary references Fouss and/or Ellis (Decision at 7). The third-party submission was filed in the application that matured into the ’394 patent and presented Cobb for consideration by the examiner. The submission stated that Cobb was cited in related U.S. patent application No. 14/175,477 (the ’477 application) in an office action dated Sept. 17, 2015, and that the statement of relevance presented in the office action “is adopted for this submission” (id. at 8-9, citing the third-party submission). The ’477 application matured into U.S. Patent No. 9,556,576 (the ’576 patent), and the ’576 patent and the ’394 patent and their underlying applications were said to disclose the same subject matter, as both applications were continuations of the same parent application and claimed priority to the same provisional application (id. at 9). Because the examiner of the ’477 application was also the examiner of the ’394 patent, the Board concluded that “the Examiner was well-aware of the Cobb reference and its specific disclosure” (id. at 9-10). Continue Reading