Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: August 5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GARDNER DENVER, INC.,
`Petitioner,
`v.
`UTEX INDUSTRIES, INC.,
`Patent Owner.
`
`IPR2020-00333
`Patent 10,428,949 B2
`
`
`
`
`
`
`
`
`
`Before ULRIKE W. JENKS, SCOTT A. DANIELS, and
`JAMES A. WORTH, Administrative Patent Judges.
`JENKS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a), 37 C.F.R. § 42.4
`
`
`
`
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`IPR2020-00333
`Patent 10,428,949 B2
`
`INTRODUCTION
`I.
`Gardner Denver Inc. (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–16 of U.S. Patent No. 10,428,949 B2 (Ex. 1001,
`“the ’949 patent”). Paper 1 (“Pet.”). Utex Industries, Inc. (“Patent Owner”)
`filed a Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the Petition “shows that there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” Upon considering the arguments and evidence, we deny review
`of the Petition on a discretionary basis under 35 U.S.C. § 325(d).
`II. BACKGROUND
`A. Related Proceedings
`Petitioner and Patent Owner identify Utex Industries, Inc. v. Troy
`Wiegand and Gardner Denver, Inc., Case No. 4:18-cv-01254 (S.D. Tex.).
`Pet. 1; Paper 3, 2. In addition, Petitioner notes that the outcome in this
`proceeding could affect proceeding in U.S. Patent App. No. 16,444,999
`which is a continuation of the application that issued as the ’949 patent.
`Pet. 1; see also Paper 3, 2.
`B. The ’949 Patent (Ex. 1001)
`The ’949 patent is titled “PACKING ASSEMBLY FOR A PUMP.”
`Ex. 1001, (54). According to the ’949 patent the “invention relates to a
`packing or seal assembly for a pump and more particularly to a header ring
`for use in such an assembly.” Id. at 1:21–23. As background the ’949 patent
`explains “with respect to the header ring, failure of the sealing assembly
`primarily occurs due to a phenomena known as ‘nibbling.’” Id. at 1:64–65.
`The ’949 patent recognizes that header rings are typically made of
`elastomeric material. Specifically, “[t]he header ring can be constructed of a
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`IPR2020-00333
`Patent 10,428,949 B2
`homogeneous elastomeric material or an elastomeric material containing
`layers of cloth or other reinforcing type materials. It is also known to cover
`certain surfaces of the header ring, particularly the so-called rearward
`surfaces with a reinforcing fabric.” Id. at 1:57–62.
`Figure 5 of the ’949 patent is reproduced below.
`
`
`Figure 5 shows a cross-sectional view of one embodiment of a header ring.
`Id. at 3:7–8. Sections 61 and 62 in Figure 5 depict an anti-nibbling section
`made of fabric-reinforced rubber, synthetic or natural. Id. at 5:1–3.
`[T]he header ring 50 [shown above in Figure 5] comprises an
`annular body portion 52, an annular axially extending pedestal
`53, an annular, axially extending bead 56, distal the pedestal 53,
`and a radially inwardly facing, annularly extending sealing lip
`58. As can be seen, body 52, bead 56, pedestal 53 and sealing
`lip 58 are integrally formed, for the most part, of a
`homogeneous, elastomeric material. However, a portion 60 of
`the pedestal 53 forming the radially inwardly facing cylindrical
`surface 61 and the portion 62 of the sealing lip 58 forming a
`portion of sealing surface 64 is comprised of a layer of
`reinforced, elastomeric material, bonded to the homogeneous
`elastomeric material of the remainder of header ring 50.
`Id. at 3:22–34.
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`IPR2020-00333
`Patent 10,428,949 B2
`
`C. Illustrative Claims
`The ’949 patent includes 16 claims. Claims 1, 3, 6, 9, and 14 are
`independent claims. Claims 1 and 9 of the ’949 patent are illustrative and are
`reproduced below:
`1. A header ring comprising:
`an opening;
`a radially inwardly facing annularly extending sealing lip
`adjacent the opening;
`a radially inwardly facing cylindrical surface adjacent the
`opening;
`an annular radially outwardly facing cylindrical surface opposite
`the opening;
`a first annular radially extending surface extending between the
`radially inwardly facing cylindrical surface and the annular
`radially outwardly facing cylindrical surface;
`a second annular axially extending surface extending between
`the annular radially outwardly facing cylindrical surface and
`the radially inwardly facing annularly extending sealing lip;
`an axially extending annular bead opposite the first annular
`radially extending surface, the bead being adjacent the second
`annular axially extending surface and the radially inwardly
`facing annularly extending sealing lip; and
`fabric reinforced elastomeric material covering at least the
`radially inwardly facing annularly extending sealing lip and
`the radially inwardly facing cylindrical surface.
`Ex. 1001, 5:19–42.
`9. A header ring comprising:
`an opening;
`a resilient body, comprising:
`a radially inwardly extending first annular portion adjacent the
`opening;
`an axially extending second annular portion adjacent the
`opening;
`an axially extending third annular portion opposite the opening;
`a radially extending fourth annular portion extending between
`the second and third annular portions;
`a fifth annular portion extending between the third annular
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`IPR2020-00333
`Patent 10,428,949 B2
`portion and the first annular portion; and
`fabric reinforced elastomeric material entirely encapsulating the
`resilient body and defining the exterior surface thereof.
`Id. at 6:45–60.
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–16 of the ’949
`patent on the following grounds (Pet. 4):
`
`Claims Challenged 35 U.S.C. § Reference(s)/Basis
`1–6, 9, 10, 13
`Hjelsand2
`102(b)1
`
`1–6, 9, 10, 13
`
`1–6, 9, 10, 13
`
`1–16
`
`103(a)
`
`103(a)
`
`103(a)
`
`Hjelsand
`
`Hjelsand, Kalsi3
`
`Hjelsand, Kohl4
`
`Petitioner also relies on the declaration of Dr. Benton Baugh
`(Ex. 1003)5.
`
`III. DISCRETION UNDER 35 U.S.C. § 325(d)
`Patent Owner urges us to deny institution under 35 U.S.C. § 325(d)
`“because the PTO already considered the same or materially identical prior
`art disclosures that Petitioner relies on here during the nearly three years of
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`challenged claims of the ’949 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`version of 35 U.S.C. §§ 102 and 103 in this Decision.
`2 Hjelsand, US 4,474,382, issued Oct. 2, 1984 (Ex. 1004).
`3 Kalsi et al., US 5,738,358, issued Apr. 14, 1998 (Ex. 1005).
`4 Kohl, US 3,271,039, issued Sept. 6, 1966 (Ex. 1006).
`5 We note that there are two entries for Exhibit 1003, one was submitted
`December 20, 2019 and the other on January 23, 2020. Any reference to
`Exhibit 1003 in this Decision is to the exhibit filed on January 23, 2020.
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`Patent 10,428,949 B2
`examination leading to the ’949 Patent’s issuance.” Prelim. Resp. 5.
`According to Patent Owner, “Petitioner’s primary reference—Hjelsand—
`was submitted during prosecution to the PTO and marked ‘considered’ by
`the Examiner.” Id. at 6 (citing Ex. 1001, 2; Ex. 1002, 137). Patent Owner
`highlights that “the Examiner thoroughly considered another reference,
`Roach, with a nearly identical disclosure to Hjelsand.” Id. at 7 (citing Ex.
`1001, 2; Ex. 2003).
`
`A. Legal Principle
`Institution of inter partes review is discretionary. Harmonic Inc. v.
`Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that “the
`PTO is permitted, but never compelled, to institute an IPR proceeding”). The
`Patent Office may, for example, deny institution under 35 U.S.C. § 325(d),
`which provides, in pertinent part, that “[i]n determining whether to institute
`or order a proceeding under this chapter . . . 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 Office.”
`In evaluating whether the same or substantially the same prior art or
`arguments were previously presented to the Office, the Board has identified
`several non-exclusive factors for consideration. Becton, Dickinson & Co. v.
`B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB
`Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“the Becton,
`Dickinson factors”). Those factors are as follows:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
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`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the
`prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts presented in
`the Petition warrant reconsideration of prior art or arguments.
`Id.; see also Patent Trial and Appeal Board Consolidated Trial Practice
`Guide November 20196 (“Consolidated Practice Guide”) at 62–63
`(discussing the Becton, Dickinson factors); see also 84 Fed. Reg. 64,280
`(Nov. 21, 2019).
`As further explained in Advanced Bionics, LLC v. Med-El
`Electromedizinishe Gerӓte GMBH, IPR2019-01469, Paper 6 at 10 (Feb. 13,
`2020) (“Advanced Bionics”) (precedential), factors (a), (b), and (d) from
`Becton, Dickinson relate to whether the art and arguments presented in the
`petition are the same or substantially the same as those previously presented
`to the Office. Factors (c), (e), and (f) “relate to whether the petitioner has
`demonstrated a material error by the Office” in its prior consideration of the
`art or arguments. Id.
`Only if the same or substantially the same art or arguments were
`previously presented to the Office do we then consider whether petitioner
`has demonstrated error. Advanced Bionics, Paper 6 at 8–10. “If the petitioner
`fails to show that the Office erred, the Director may exercise his discretion
`not to institute inter partes review.” Id. at 8–9 (“If a condition in the first
`part of the framework [i.e., substantially same art or arguments] is satisfied
`
`
`6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`and the petitioner fails to make a showing of material error, the Director
`generally will exercise discretion not to institute inter partes review”). “At
`bottom, this [§ 325(d)] framework reflects a commitment to defer to
`previous Office evaluations of the evidence of record unless material error is
`shown.” Id. at 9. On the question of material error, “[i]f reasonable minds
`can disagree regarding the purported treatment of the art or arguments, it
`cannot be said that the Office erred in a manner material to patentability.” Id.
`B. Becton, Dickinson Factors (a), (b), and (d)
`We first determine whether the same or substantially the same art or
`arguments were presented previously to the Office. Petitioner raises four
`grounds of unpatentability, all of which rely on Hjelsand. Pet. 4. Grounds 1
`and 2 rely solely on Hjelsand. Grounds 3 and 4 rely on Hjelsand in
`combination with either Kalsi or Kohl. Id.
`Hjelsand was presented previously to the Office during examination
`of the ’949 patent. Ex. 1002, 137; see Prelim Resp. 6. Kalsi and Kohl were
`not presented to the Office during prosecution but other disclosed references
`containing substantially similar teachings to those disclosed in Kalsi and
`Kohl were presented to the Office. Prelim Resp. 7–10.
`1. Hjelsand (Exhibit 1004)
`Petitioner relies heavily on Hjelsand to support its challenge to the
`unpatentability of claims 1–16. Pet., passim.
`Petitioner’s reliance on Hjelsand mirrors Examiner’s reliance on
`Roach during prosecution. Specifically, Petitioner relies on Hjelsand for
`teaching a header ring with the same geometry of the ’949 patent. Pet. 24. A
`magnified portion of Figure 2 of Hjelsand is reproduced below.
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`Patent 10,428,949 B2
`
`
`The portion of Figure 2 shows a cross section of Hjelsand’s header ring 26.
`See Pet. 25 (citing Ex. 1004 (Fig.2))(edited to identify element 26). Hjelsand
`describes the header ring as follows:
`The header ring 26 is preferably constructed of a homogeneous
`elastomeric material. By the term “homogeneous” it is meant
`that the elastomeric material from which the header ring 26 is
`constructed does not include any non-homogeneous materials,
`such as layers of cloth or other reinforcing type materials
`therein. Non-homogeneous elastomeric materials could,
`however, be used for the header ring 26. Also, a reinforcing
`fabric (not shown) may be used on the rearward surfaces of
`header ring 26.
`Ex. 1004, 2:33–42.
`Hjelsand was submitted during prosecution of the ’949 patent and
`Examiner marked the reference as considered. See Ex. 1001, 2 (56)
`(Hjelsand under References Cited on face of ’949 Patent); Ex. 1002, 137
`(List of References Cited by Applicant and considered by Examiner listing
`Hjelsand (#A3) and signed by Examiner).
`Roach, relied on by Examiner during prosecution, discloses a header
`ring having the following structure.
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`
`Figure 2, shown above, shows a header ring means 26 in an uncompressed
`cross-sectional shape. Ex. 1010 (Fig. 2); see Ex. 1002, 73 (Examiner’s
`Office Action citing Roach).
`The header ring means 26 is preferably constructed of a
`homogeneous elastomeric material. By the term
`“homogeneous” it is meant that the elastomeric material from
`which the header ring 38 is constructed does not include any
`non-homogeneous materials, such as layers of cloth or other
`reinforcing type materials therein. Non-homogeneous
`elastomeric materials could, however, be used for the header
`ring means 26. Also, a reinforcing fabric (not shown) may be
`used on the rearward surfaces 32, 34, 36 of header ring means
`26.
`Ex. 1010, 3:8–17; see Ex. 1002, 73–74, 102–103. Examiner found that
`Roach disclosed covering some surfaces of the header ring with fabric, but
`did not disclose “that the layer of fabric reinforced elastomeric material
`covers the annular radially outwardly facing cylindrical surface.” Ex. 1002,
`74. Examiner instead relied on Wheeler for the teaching of covering
`additional surfaces on a header ring. Id.
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`
`A comparison of the disclosures of Hjelsand and Roach reveals that
`the information with respect to the header rings are nearly identical between
`the two references. Compare Ex. 1003, 2:33–42, with Ex. 1010, 3:8–17; see
`Ex. 2003.
`
`Petitioner relies on Hjelsand for disclosing a fabric-reinforced header
`ring. Pet. 31. Petitioner’s citation to relevant teachings in Hjelsand
`substantially overlap with Examiner’s findings in Roach during prosecution.
`See Ex. 1002, 73–74, 102–103. We find that Examiner thoroughly
`considered the same teachings in Roach that Petitioner presently relies on in
`Hjelsand. The Petition, therefore, presents the same art (Hjelsand) and the
`same or substantially the same arguments related to Hjelsand that were
`already thoroughly considered by the Office with respect to Roach.
`2. Kalsi (Exhibit 1005)
`Petitioner relies on Kalsi for disclosing a “fabric reinforced
`elastomer” that “resists extrusion under high pressure.” Pet. 67 (citing
`Ex.1005 (5:66–6:5; 6:19–30; 10:11–21; 11:45–58; Fig.5). Petitioner
`contends that “Kalsi differs from prior art considered by the Patent Office,
`including Wheeler, because of the shape of its header ring and regions of its
`header ring with fabric reinforced elastomeric material.” Pet. 100.
`Kalsi was not presented to the Office during the prosecution of the
`’949 patent. See Ex. 1001, 2 (56). Kalsi discloses rotary shaft seals. See Ex.
`1005, 1:7–16. Kalsi discloses that in order to resist extrusion during use the
`dynamic sealing lip is “constructed wholly or in part from a relatively hard,
`relatively high modulus extrusion resistant material (such as a polymeric
`material, a high durometer elastomer, or reinforced material such as a fiber
`or fabric reinforced elastomer or a fiber glass or metal-particle reinforced
`plastic).” Ex. 1005, 6:22–28.
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`Although Kalsi was not disclosed to the Office during prosecution, the
`Office already considered references that disclosed similar teachings of
`covering a pump assembly ring either wholly or in part with reinforcing
`materials. Patent Owner directs our attention to Horvath. Prelim. Resp. 7–8.
`Horvath was submitted during prosecution of the ’949 patent and
`Examiner marked the reference as considered. See Ex. 1001, 2 (56);
`Ex. 1002, 137 (List of References Cited by Applicant and considered by
`Examiner listing Hjelsand (#A2) and signed by Examiner). Horvath
`discloses a stuffing box through which a rod moves axially, and contains
`packing material such as packing rings. Ex. 1015, 2:1–6. Horvath discloses
`these rings are made from “conventional material used for packing purposes
`and may be rubber, plastic in homogeneous form or may comprise rubber or
`rubber-like material, plastic or the like reinforced by asbestos fibers, cotton
`fabric or the like.” Ex. 1015, 3:24–30. Horvath, therefore, discloses pump
`assembly rings reinforced with fabric or fibers.
`We find that the disclosure in Kalsi is cumulative to Horvath with
`respect to reinforcing fabric. The Petition, therefore, presents the same or
`substantially the same art that was already considered by the Office.
`3. Kohl
`Petitioner relies on Kohl for disclosing “a packing ring 10 with a core
`11 of ‘cured elastomeric material’ completely surrounded by a layer 12 ‘of
`braided fabric over the core, the interstices between the filaments of the
`fabric being filled with cured elastomeric material.’” Pet. 76 (citing Ex.1006
`(1:8–11; 2:12–17; 2:51–64; Fig.2)). Petitioner contends that Kohl differs
`from art disclosed during prosecution, specifically Wheeler, “because the
`entire homogenous elastomer core is wrapped in fabric reinforced
`elastomeric material.” Pet. 100.
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`Patent 10,428,949 B2
`Kohl was not presented to the Office during prosecution. See
`Ex. 1001, 2 (56). Kohl discloses a hydraulic packing comprising “a ring
`having a core of cured elastomeric material and one or more layers of fabric
`braided over the core, the interstices between the filaments of the fabric and
`the layers of the fabric being filled with cured elastomeric material.”
`Ex. 1006, 2:12–16.
`Although Kohl was not disclosed to the Office during prosecution, the
`Office already considered references that disclosed similar teachings of
`covering a pump assembly ring with reinforcing materials. Patent Owner
`directs our attention to Milligan. Prelim. Resp. 9–10.
`Milligan was submitted during prosecution of the ’949 patent and
`Examiner marked the reference as considered. See Ex. 1001, 2 (56);
`Ex. 1002, 76 (List of References Cited by Applicant and considered by
`Examiner listing Hjelsand (#A2) and signed by Examiner). Milligan
`discloses a packing ring that “has a core [] of relatively soft rubber or
`rubber-like material (all such materials being hereinafter referred to for
`convenience merely as ‘rubber’) preferably completely encased within an
`envelope [] of fibrous fabric, the outer surface areas of which are covered or
`filled as at [] with compressed polytetrafluoroethylene.” Ex. 1018, 2:19–24).
`We find that Kohl’s disclosure is cumulative to Milligan.7 The
`Petition, therefore, presents the same or substantially the same art and
`arguments that was already considered by the Office.
`
`
`7 We note that the disclosure of Milligan in combination with Roach was
`thoroughly considered by Examiner during prosecution of the 13/954,672
`application (see prosecution history of U.S. Application No. 13/954,672,
`Non-Final Rejection mailed October 25, 2013, a benefit application to the
`’949 patent (Ex. 1001 (63)).
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`
`4. Summary
`For the reasons discussed above, we find that the information
`disclosed in Hjelsand was already presented to the Office in the rejections of
`the claims for anticipation and obviousness over the information contained
`in Roach and Wheeler. We find that Kalsi and Kohl are no more relevant
`than, and cumulative to, references that were presented during prosecution.
`In sum, Hjelsand, Kalsi, and Kohl reflect the same or substantially the same
`prior art and arguments that was already presented to the Office.
`C. Becton, Dickinson Factors (c), (e), and (f)
`Because we find that the “same or substantially the same prior art or
`arguments previously were presented to the Office,” we turn to whether
`Petitioner has shown that the Office erred in evaluating the art or arguments.
`Becton, Dickinson, Paper 8 at 17; Advanced Bionics, Paper 6 at 8–10.
`Petitioner contends that “the Examiner clearly overlooked [or
`misapprehended] Hjelsand’s embodiment disclosing a header ring made
`entirely of fabric reinforced elastomeric material.” Pet. 98. Petitioner
`additionally contends that Kalsi and Kohl are new prior art and differ from
`Wheeler cited by the Office during prosecution. Pet. 100.
`1. Non-Homogenous Header
`Petitioner contends that “the Patent Office did not make a rejection of
`any pending claim as anticipated or obvious over a header ring made entirely
`of fabric reinforced elastomeric material.” Pet. 99. In other words,
`Petitioner’s position is that the Office erred in evaluating the prior art
`because it did not recognize that the non-homogenous header disclosed in
`Roach, and by extension in Hjelsand, encompasses a header ring made
`entirely of fabric reinforced elastomeric material.
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`During prosecution, Examiner relied on the fabric reinforcing
`disclosure of Roach in rejecting the claims. See Ex. 1002, 73–74, 102–103.
`Examiner found that Roach encompasses non-homogenous headers8 but
`found that Roach “does not disclose that the layer of fabric reinforced
`elastomeric material covers the annular radially outwardly facing cylindrical
`surface.” Ex. 1002, 73, 102 (“a fabric reinforced elastomeric material ([Ex.
`1010] column 3 line 16-17) covering the forward facing surfaces of the
`header ring.”). “Examiner used Roach to reject the claims of the application
`that led to the ’949 Patent, relying on the same reasoning the Petitioner
`presents here.” Prelim. Resp. 7. Based on the near identical disclosure
`between Roach and Hjelsand (see Ex. 2003), we agree with Patent Owner
`that “the relevant Hjelsand disclosure was submitted and considered multiple
`times during prosecution.” Prelim Resp. 7; see Ex. 1002, 73–74, 102–103.
`Insofar that Examiner accepted Applicant’s arguments during
`prosecution9 we are unpersuaded that such acceptance rises to the level of a
`clear and material error about which reasonable minds could not disagree.
`Advanced Bionics, Paper 6 at 9 (“If reasonable minds can disagree regarding
`
`
`8 Petitioner urges that non-homogenous header disclosed in Hjelsand means
`covered entirely with fabric reinforced elastomer. See Pet. 99. However, a
`non-homogenous header is not necessarily limited to a construction where
`one material encases another. A non-homogenous header can also
`encompass constructions made of two different materials fused together
`side-by-side. See e.g. Ex. 1001 (2:27–29 (Discussing prior art header ring
`made up of two sections. One section header comprises a fabric or fiber
`reinforced material while the other portion is formed of a homogeneous
`elastomeric material construction), Fig. 3).
`9 Examiner did not provide express reasons for allowance, and therefore the
`reasons that ultimately convinced Examiner to allow the claims are not
`known. Ex. 1002, 129–131.
`
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`the purported treatment of the art or arguments, it cannot be said that the
`Office erred in a manner material to patentability.”).
`2. “New Combinations” of Prior Art
`Petitioner argues that “Hjelsand was identified on the face of the
`patent, among over 50 patent and publications, [but] there is no evidence
`that the Examiner studied Hjelsand during prosecution.” Pet. 98.
`We are not persuaded by Petitioner’s contention and agree with Patent
`Owner that the evidence in the record supports the position that Examiner
`studied the same disclosure relied on in the petition. See Prelim Resp. 7 (“the
`Examiner thoroughly considered another reference, Roach, with a nearly
`identical disclosure to Hjelsand. See Ex. 1001, 2 (Roach under References
`Cited on face of ’949 Patent); Ex. 2003 (comparison of disclosures of Roach
`and Hjelsand).”); see above II.B.1. Here, the evidence in the record supports
`the position that “the relevant Hjelsand disclosure was submitted and
`considered multiple times during prosecution and the claims were already
`found to be patentable over this disclosure.” Prelim Resp. 7. Accordingly,
`we are not persuaded that Hjelsand provides additional information that was
`not before Examiner during prosecution.
`Petitioner contends that Kalsi and Kohl were not before the Office
`during prosecution. Pet. 99. The fact that Petitioner presented additional
`references Kalsi and Kohl that, similar to Horvath disclose fiber of fabric
`reinforced material (see above II.B.2), and similar to Milligan disclose a
`packing ring encased within an envelope of fibrous fabric (see above II.B.3),
`does not persuade us that Examiner materially erred in determining the
`patentability of the challenged claims. The record supports Patent Owner’s
`position that Kalsi and Kohl are cumulative to Horvath and Milligan both of
`which were considered by the Office. See Prelim. Resp. 8–10.
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`Thus, we find that there is insufficient additional facts or evidence on
`this record that justify reconsidering the patentability of the ’949 patent
`claims.
`
`D. Weighing the Factors
`Weighing the above factors, we conclude on the record presented that
`the circumstances of this case favor discretionary denial based on § 325(d).
`IV. CONCLUSION
`Upon consideration of the Petition and the Preliminary Response, and
`the evidence presented here, we exercise discretion to deny institution of a
`trial under 35 U.S.C. § 325(d).
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and we do not institute inter
`partes review of any claim of the ’949 patent based on the grounds asserted
`in this Petition.
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`IPR2020-00333
`Patent 10,428,949 B2
`FOR PETITIONER:
`Helena Kiepura
`Benjamin J. Behrendt
`KIRKLAND & ELLIS LLP
`helena.kiepura@kirkland.com
`benjamin.behrendt@kirkland.com
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`
`FOR PATENT OWNER:
`
`Paul Morico
`Natalie Alfaro Gonzales
`BAKER BOTTS LLP
`paul.morico@bakerbotts.com
`natalie.gonzales@bakerbotts.com
`
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`kis
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`18
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