Cultec, Inc. v. Stormtech LLC.

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= . Patent Trial and Appeal Board
8} _ Informative Paper 7
Standard Operating Procedure 2

Entered: August 22, 2017

Trials@uspto.gov
Tel: 571-272-7822

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CULTEC, INC.,
Petitioner,
Vv.

STORMTECH LLC,
Patent Owner.

Case IPR2017-00777
Patent 9,255,394 B2

Before JOSIAH C. COCKS, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GROSSMAN, Administrative Patent J udge.
DECISION

Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. 	INTRODUCTION
Cultec, Inc. (“Petitioner”) filed a Petition requesting an inter partes review
of all the claims in U.S. Patent No. 9,255,394 B2 (“the ’394 patent”), which
includes claims 1–20. Paper 1 (“Pet.”). StormTech LLC (“Patent Owner”) filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”).
The Board reviews the Petition and Patent Owner’s Preliminary Response
and, on behalf of the Director, determines whether to institute a trial. 37 C.F.R.
§ 42.4(a). An inter partes review may not be instituted “unless . . . there is a
reasonable likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.” 35 U.S.C. § 314.
Upon consideration of the Petition and Patent Owner’s Preliminary
Response, we deny institution of an inter partes review because the same or
substantially the same prior art or arguments previously were presented to the
Office.
A. Related Proceedings
The ’394 patent is the subject of a suit captioned StormTech LLC et al v.
Cultec, Inc., 3:15-cv-01890-AVC (D. Conn. Dec. 31, 2015). Pet. 1; Paper 4, 1.
Patent Owner states that U.S. Patent Nos. 8,672,583 and 9,556,576 “claim
priority to the same application to which the ’394 patent claims priority.” Paper 4,
1. Also, Patent Owner states that Petitioner filed a petition, IPR2017-00526,
seeking inter partes review of U.S. Patent No. 8,672,583. Id. at 2. Institution of
an inter partes review was denied in IPR2017-00526 because the Petition was
barred under 35 U.S.C. § 315(b). Cultec, Inc. v. StormTech LLC, IPR2017-00526,
Paper 14 (PTAB July 17, 2017).

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B. The ’394 Patent
The ’394 patent relates generally to a stormwater management system.
Stormwater results from rain or snowmelt flowing over the ground. Hard surfaces,
like roofs, driveways, parking lots, and streets prevent stormwater from naturally
soaking into the ground. If not managed properly, stormwater runoff can create
stormwater pollution and/or flooding issues. The disclosed system uses arch-
shaped, molded plastic, corrugated, sheet material to define a “storm chamber.”
The arch-shaped sheet material is buried beneath the ground to define void spaces
that collect stormwater. The collected stormwater is either discharged under
controlled conditions or simply allowed to dissipate into the ground. Ex. 1001,
1:19–28.
The arch-shaped sheet material is an alternative to using buried corrugated
plastic pipe. Id. at 1:56–2:8. Corrugated plastic pipes have circumferentially
continuous cross sections, whereas storm chambers have open bottoms and open
ends. Id. End caps close off the ends of the chambers. Id. at 2:62–63. An
objective of the disclosed invention is to provide large stormwater chambers that
have performance and safety factors consistent with those achieved with
corrugated plastic pipe. Id. at 2:5–8. The disclosed invention uses a series of
corrugations and sub-corrugations in the sheet material to achieve this objective.
Id. at 3:6–25.

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Figures 1, 2, and 4 from the ’394 patent are reproduced below.

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Figure 1 is a perspective view of a stormwater chamber having crest and
valley corrugations with associated sub-corrugations. Figure 2 is a side elevation
view of a portion of the chamber shown in Figure 1. Figure 4 is a cross section
through a portion of the sidewall of the chamber shown in Figure 1. Ex. 1001,
4:25–33.
As shown in Figures 1 and 2, and as disclosed in the Specification (see
Ex. 1001, 4:54–59), stormwater chamber 20 has a curved arch shape cross section.
Opposing sidewalls 44 rise upwardly from opposing side bases 26 and curve
inwardly to top 24. Opposing side bases 26 have horizontal flanges 46 that provide
bearing area upon the soil upon which the chamber rests.
Chamber 20 has a multiplicity of corrugations that run transverse to the
chamber length axis CL (see Figure 2). Id. at 6:13–14. The corrugations include
crest corrugations 28, valley corrugations 30, crest sub-corrugations 32, and valley
sub-corrugations 36. Id. at 6:14–16; 7:10–28. Sub-corrugations 32, 36 are smaller
or secondary corrugations superimposed on primary corrugations 28, 30,
respectively. Id. at 3:24–27. According to the Specification, the sub-corrugations
improve the strength of the chamber sidewalls. Id. at 3:63–64.
In use, a plurality of chambers are placed on a graded surface and connected
end to end to form a string of chambers. Id. at 11:15–17. Stormwater chambers
typically are buried in the soil. Id. at 5:21–30. End caps 50 (see Figures 10, 11)
are placed on the outermost ends of the strings of interconnected chambers, to keep
the surrounding soil from intruding into the interiors of the chambers.
Id. at 11:35–38.

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C. Representative Claim
Claims 1–20 in the ’394 patent are challenged. Claims 1, 14, and 18 are
independent claims. Claim 1, reproduced below, is illustrative of the claimed
invention:
1. A chamber, for drainage, comprising:
opposing side bases;
a chamber top;
sidewalls extending from the opposing side bases to the chamber
top;
a 	plurality 	of 	crest 	corrugations 	and 	a 	plurality 	of 	valley
corrugations positioned along a length of the chamber; and
a plurality of crest sub-corrugations, wherein each crest sub-
corrugation runs upwardly from an opposing side base and along a
portion of a crest corrugation, wherein each crest sub-corrugation
terminates at an elevation lower than the chamber top, wherein a height
of each crest sub-corrugation decreases with increasing elevation from
the opposing side base.
Claim 1 includes crest corrugations, valley corrugations, and crest sub-
corrugations. It does not recite valley sub-corrugations. Claim 14 is substantially
the same as claim 1. Rather than recite limitations about decreasing the “height” of
each crest sub-corrugation as in the final clause of claim 1, however, claim 14
recites limitations about decreasing the “width” of each crest sub-corrugation.
Claim 18 recites both crest and valley corrugations, and crest and valley sub-
corrugations.

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D. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Ground 	Claims 	Prior Art
§ 103(a)1 1–20 	Cobb2
§ 103(a) 	1–20 	Cobb and Fouss3
§ 103(a) 	1–20 	Cobb and Ellis4
§ 103(a) 	1–20 	Cobb, Fouss, and Ellis
§ 103(a) 	8 	Cobb and November5
II. 	ANALYSIS
A. Previous Consideration of Cobb, Fouss, and Similar References by the PTO
Patent Owner asserts “[t]he Board should deny institution of Grounds 1-4[6]
because the Patent Office already considered their art and arguments.” Prelim.
Resp. 2 (citing 35 U.S.C. § 325(d)). The second sentence of the statutory section
on which Patent Owner relies states:
1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat.
284, 296–07 (2011), took effect on September 16, 2012. Because the application
for the patent at issue in this proceeding has an effective filing date before that
date, we refer to the pre-AIA versions of the statute.
2 U.S. Patent No. 8,491,224 B2, issued July 23, 2013 (Ex. 1002).
3 U.S. Patent No. 4,360,042, issued November 23, 1982 (Ex. 1003).
4 U.S. Patent No. 6,497,333 B1, issued December 24, 2002 (Ex. 1004).
5 U.S. Patent No. 2,876,801, issued March 10, 1959 (Ex. 1007).
6 Patent Owner’s argument does not include Ground 5, asserting Cobb and
November against claim 8. Nonetheless, we exercise our discretion and address
whether the same or substantially the same prior art or arguments asserted in
Ground 5 previously were presented to the Office.

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In determining whether to institute or order a proceeding under this
chapter, chapter 30, or chapter 31, the Director may take into account
whether, and reject the petition or request because, the same or
substantially the same prior art or arguments previously were presented
to the [Patent and Trademark] Office.
35 U.S.C. § 325(d).
It is beyond reasonable dispute that Cobb and Fouss were presented to, and
considered by, the Office.
1. Third Party Submission Regarding Cobb
On November 4, 2015, a Third Party Submission under 37 C.F.R. § 1.2907
(“Submission”) was filed in the application that matured into the ’394 patent,
Application No. 14/165,503 (“the ’503 application”). Ex. 1010, 117–126.8 The
Submission presented the Cobb patent, U.S. Patent No. 8,491,224, for
consideration by the Examiner. Ex. 1010, 22, 117. Stephen P. McNamara,
Attorney Registration Number 32,745, filed the Submission. Id. at 120.
Mr. McNamara is Lead Counsel for Petitioner in the proceeding before us.
Paper 2.
The Third Party Submission stated that Cobb was relevant to the claims in
the ’503 application because Cobb “discloses claim elements in the present U.S.
Patent Application No. 14/165,503.” Ex. 1010, 117. The Submission also stated
that Cobb “has been recently cited in the related U.S. Patent Application No.
7 This Rule provides that “[a] third party may submit, for consideration and entry
in the record of a patent application, any patents, published patent applications, or
other printed publications of potential relevance to the examination of the
application if the submission is made in accordance with 35 U.S.C. 122(e) and this
section.” 37 C.F.R. § 1.290(a).
8 As stated in the Third Party Submission, this was a “resubmission” that was
“responsive to a notification of non-compliance issued for an earlier filed third-
party submission.” Ex. 1010, 120.

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14/175,477 in the Office Action dated September 17, 2015.” Id. Additionally, the
Submission stated that “[t]he statement of relevance presented in the Office Action
dated September 17, 2015 is adopted for this submission.” Id. (emphasis added).
Thus, we look at the cited Office Action, which is part of the Submission.
Application No. 14/175,477 eventually matured into U.S. Patent No.
9,556,576 (“the ’576 patent”). See Ex. 3002. The ’576 patent and the ’394 patent,
and their underlying applications, disclose a corrugated stormwater chamber
having sub-corrugations. See Exs. 3001, 3002. Both applications are
continuations of the same parent application, and claim priority to the same
provisional application. Compare the Related U.S. Application Data in Ex. 3001
with the Related U.S. Application Data in Ex. 3002.
The September 17, 2015 Office Action during prosecution of Application
No. 14/175,477 did not contain a discussion specifically identified as a “statement
of relevance.” See Ex. 3001. It did, however, rely on Cobb and Brochu, a
published U.S. patent application, to reject claims 1–20 in Application No.
14/175,477 under 35 U.S.C. § 103. Id. at 5–7.9 Cobb was discussed extensively in
the Office Action. Id. The Examiner relied on Brochu for the disclosure of “a
chamber wherein the crest corrugations decrease in width with elevation from the
base (fig. 1 )” (id. at 5) and the disclosure of an “end crest corrugation [that]
includes a height less than a height of the crest corrugation (fig. 15)” (id. at 6).
The Examiner relied on Cobb for all other limitations recited in claims 1–20.
Id. at 5–7. We note that the Examiner of Application No. 14/175,477 (e.g.,
id. at 8) also was the Examiner in the ’394 patent (e.g., Ex. 1001, 1). Thus, at the
9 We cite to the exhibit page number, not the Office Action page number.

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time Cobb was presented in the Third Party Submission, the Examiner was well-
aware of the Cobb reference and its specific disclosure.
Moreover, the Examiner considered the Third Party Submission. The
Submission was signed by the Examiner on December 11, 2015. Ex. 1010, 23. As
stated on the signed form, the Examiner’s signature “indicates all documents listed
above have been considered.” Id. Additionally, typed on the bottom of the form is
the statement “ALL REFERENCES CONSIDERED EXCEPT WHERE LINED
THROUGH. /B.F.F/.” Id. No references were lined through. “B.F.F.” appears to
be the initials of the Examiner.
In addition to relying on the analysis of Cobb and Brochu from the
September 17, 2015 Office Action in Application No. 14/175,477, the Third Party
Submission also submitted and relied on “[a] chart with a detailed identification of
the relevant portions of Cobb, U.S. Pat. No. 8491224 as applied to the pending
claims [in the ’503 application].” Ex. 1010, 117 (emphasis added). The submitted
claim chart compares relevant sections of Cobb to each clause of pending
application claims 25–44. Pending application claims 25–44 issued as claims 1–
20, respectively, in the ’394 patent. Id. at 21. For each clause in pending
application claims 25–44, the submitted claim chart identifies the column, line, and
relevant text, or the relevant figure, from Cobb where the claimed element or
limitation is asserted to be disclosed in Cobb. Id. at 121–124.
The claim charts submitted with the Petition are an expanded version of the
claim chart submitted with the Third Party Submission. Compare, e.g., the Third
Party Submission claim chart for application claim 25 (Ex. 1010, 121), with the

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Petition claim chart for patent claim 1 (Pet. 30–33).10 The Petition claim chart
adds copies of cited figures, some with annotations, and expanded explanations,
but the basic citations to columns, lines, and figures from Cobb are substantially
the same.
The Third Party Submission also asserted that “[a]dditional relevant
disclosures are found in Fouss et al, US Patent No. 4,360,042 and/or Brochu, U.S.
Pat. Appl. Pub. No. 2009/0067929 (both of record).” Ex. 1010, 117.
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.
We discuss below Fouss and other cited references in the Petition.
2. Fouss and Other Cited References in the Petition
The Examiner cited and applied Fouss throughout the examination
proceedings of the ’503 application, which matured into the ’394 patent. See, e.g.,
Ex. 1010, 131–32 (applying Fouss to application claim 38 in the Final Rejection
Office Action). The Examiner found that Fouss disclosed all the claim limitations
except a crest sub-corrugation that includes a width that diminishes with increasing
elevation from the opposing base. Id. at 131. The Examiner also found that the
missing limitation was disclosed in Moore and that it would have been obvious to
modify the sub-corrugations in Fouss as disclosed in Moore to further strengthen
10 Patent claim 1 adds the phrase “for drainage” in its preamble. This preamble
phrase was not in application claim 25 when the Third Party Submission was filed.
Petitioner has not argued that “for drainage” patentably distinguishes the patent
claims from the application claims.

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the chamber at its base. Id. at 132. Thus, Fouss previously was presented to, and
considered by, the Office.
Petitioner relies on Ellis for the disclosure that a plurality of discontinuous
grooves arranged in rows provides added strength and rigidity against sidewall
deflection in plastic, cylindrical objects. Pet. 29.
Brochu, cited in the Third Party Submission, discloses continuous curve
semi-ellipse arch chamber 20 for receiving and dispersing wastewater when buried
in soil. Ex. 3003, 35–36. Chamber 20 has alternating peaks 22 and congruent
valleys 24, which together comprise corrugations running along the arch shape
cross section that defines chamber interior 21. Id. at 36. Perforations or
grooves 30 are closely spaced apart along the upward curve of sidewall 40. Id.
Unperforated webs 23 connect the peaks and valleys. Id. As disclosed in Brochu,
the closely spaced corrugations, the continuous arch curve cross section, and the
engineered slot or grove perforation pattern combine to provide a lightweight and
strong chamber. Id. at 37. We conclude that the disclosure relied on in Ellis of
discontinuous grooves is substantially the same as the discontinuous slots in
Brochu, previously presented in the Third Party Submission.
Petitioner relies on November for the disclosure of a corrugated tubing with
valley corrugations of constant width. Pet. 41. Based on this disclosure in
November, Petitioner concludes that it would have been obvious to provide valley
sub-corrugations with constant width, as recited in challenged claim 8.
In the September 17, 2015 Office Action in Application No. 14/175,477,
specifically cited in the Third Party Submission, the Examiner found that Cobb
discloses at least one valley sub-corrugation of substantially constant width. See
Ex. 3001, 7 (“With regard to claims 12-13, Cobb further discloses the at least one
valley sub-corrugation includes a tapering height towards the base (fig. 20) and the

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at least one valley sub-corrugation includes a substantially constant width
(fig. 20).”) (emphasis added)). Moreover, the detailed claim charts, submitted in
the Third Party Submission, adopted the Examiner’s position and asserted that
Cobb disclosed valley sub-corrugations of constant width, as recited in claim 8.
Thus, the disclosure relied on in November is substantially the same as
Cobb, previously presented by the Office through the Third Party Submission.
III. 	CONCLUSION
Upon review of the arguments and evidence in the Petition and Preliminary
Response, and based on the analysis above, we conclude that the same or
substantially the same prior art or arguments as are presented in the Petition
previously were presented to the Office in the Third Party Submission.
Accordingly, we exercise our discretion under 35 U.S.C. § 325(d) and do not
institute an inter partes review of the ’394 patent.
IV. 	ORDER
In consideration of the foregoing, it is hereby
ORDERED that the Petition for an inter partes review of claims 1–20 of
U.S. Patent No. 9,255,394 B2 is denied.

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PETITIONER:
Stephen McNamara
Benjamin White
smcnamara@ssjr.com
bwhite@ssjr.com
PATENT OWNER:
Aaron Parker
Sonja Sahlsten
Justin Mullen
aaron.parker@finnegan.com
sonja.sahlsten@finnegan.com
justin.mullen@finnegan.com