In its IPR petition, Broad-Ocean argued that the ’476 patent is invalid as either anticipated by—or obvious over—another patent, which Broad-Ocean labeled the “Dumser” reference. Specifically, Broad-Ocean asserted that, although the issued Dumser patent was not published until June 2002, the Dumser application was published on July 30, 1997, which was 13 days before the ’476 patent was filed on August 12, 1997. Broad-Ocean argued that Dumser therefore constitutes prior art under pre-AIA 35 U.S.C. § 102(a).
In an opinion authored by Administrative Patent Judge Mitchell G. Weatherly, the PTAB rejected Broad-Ocean’s argument, holding that Broad-Ocean was “not reasonably likely to prevail with respect to at least one of the challenged claims.” The PTAB explained that, in the IPR petition, Broad-Ocean relied on disclosures contained in the issued Dumser patent, rather than disclosures from the Dumser application. The PTAB further found that Broad-Ocean had “present[ed] no evidence that [the issued] Dumser [patent] is identical to the corresponding patent application that was laid open on July 30, 1997.” The PTAB thus concluded that Broad-Ocean “failed to establish that Dumser is prior art” and, in turn, that institution of an IPR therefore was not authorized under 35 U.S.C. § 314(a).
In Broad-Ocean Technologies, Inc. v. Regal Beloit America, Inc., No. IPR2017-00802 (PTAB Aug. 22, 2017)