Takeaway: The Board denied institution finding that the Petition raised “the same or substantially the same prior art or arguments” because the new ground merely added additional prior art to the originally asserted ground of unpatentability without substantively changing the basis for the alleged unpatentability.

In its Decision, the Board denied institution of inter partes review of the challenged claims 2-4 of the ’991 patent. The ’991 patent generally relates to devices and methods for repairing the juncture between a main pipeline and a lateral pipeline in an underground sewer pipe.

Petitioner challenged claims 2-4 of the ’991 patent on a ground of obviousness based on the combination of nine references including six U.S. patents and three separate publications related to SWELLSEAL®.

Claims 2-4 were the claims that were denied review in IPR2014-00770 (the “’770 proceeding”). Accordingly, Patent Owner urged that the Board exercise its discretion under 35 U.S.C. §325(d) to decline institution of the Petition because it presents the “same or substantially the same prior art or arguments” as those presented in the ’770 proceeding.

The Board noted that in the ’770 proceeding claims 2-4 were asserted as unpatentable over a combination of five of the nine references asserted in this proceeding. In denying institution of the ’770 proceeding, the Board found that Petitioner did not provide a sufficient reason to combine the five references, and specifically that Petitioner did not explain adequately “why a person of ordinary skill in the art would have fashioned the donut shape gasket of Kiest ’663 into a gasket having the flange portions recited in claim 2.” The Board determined that the Petition in this proceeding merely provides additional prior art disclosing a donut shaped ring as disclosed in the previously presented prior art.

Based on the above, the Board did not assess the merits of Petitioner’s additional reasoning, crafted with the benefit of the Board’s earlier institution decision. Instead, the Board “exercise[d] its discretion under 35 U.S.C. § 325(d) to deny institution of inter partesreview because it presents ‘the same or substantially the same prior art or arguments’ presented to [it] in the ’770 proceeding.”

BLD Services, LLC v. LMK Technologies, LLC, IPR2015-00723
Paper 7: Decision Denying Institution of Inter Partes Review
Dated: August 24, 2015
Patent: 8,667,991
Before: Grace Karaffa Obermann, Sheridan K. Snedden, and Zhenyu Yang
Written by: Snedden
Related Proceedings: LMK Technologies, LLC v. BLD Services, LLC, Civil Action No. 1:14-cv-00956 (N.D. Ill.); IPR2014-00770; IPR2014-00768 (USP 7,975,726); IPR2015-00721 (USP 7,975,726); IPR2014-00772 (USP 8,667,992)