Biodelivery Sciences Int’l, Inc. v. RB Pharms. Ltd.; Standard Innovation Corp. v. Lelo, Inc.

In two separate but similar written decisions involving challenged patents that were already the subject of instituted proceedings, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) denied institution of inter partes review (IPR) of two patents, finding that petitioners were merely attempting to recycle arguments from related IPR proceedings.  Biodelivery Sciences Int’l, Inc. v. RB Pharms. Ltd., Case No. IPR2014-00998 (PTAB, Dec. 19, 2014) (Yang, APJ); Standard Innovation Corp. v. Lelo, Inc., Case No. IPR2014-00907 (PTAB, Dec. 1, 2014) (Kauffman, APJ).

In the Biodelivery Sciences v. RB Pharmaceuticals, IPR, the petitioner challenged patents that relate generally to compositions and methods for treating drug addiction. The patented compound alleviates the body’s need for narcotics without producing the “high” associated with misuse. The petitioner had previously challenged the same claims of the patent-at-issue in a separate IPR proceeding currently pending before the PTAB. In that prior petition, the PTAB had exercised its discretion and declined to institute IPR on some of the grounds in the original petition.

The patent owner argued that the second petition was redundant “because it substantially repeats the same arguments and relies substantially on the same prior art that the same Petitioner relied upon in its earlier Petition regarding the same claims of the same patent.” The petitioner acknowledged that its new petition was directed to the same claims of the same patent as its previous IPR petition, but argued that the second petition cited to two references that were not cited in the initial petition.

Counter to the petitioner’s representations, the PTAB found that one of the two “new” references had actually been cited to in its first petition. Indeed, the petitioner had cited to the same page of the reference for the same disclosure. As to the second reference, though the PTAB noted that the petitioner did not specifically cite to the new reference, the primary reference utilized by the petitioner “repeatedly cite[d]” to the new reference. Based on its findings, the PTAB agreed with the patent owner that the petitioner had merely “recycled previous art and arguments” and did not provide persuasive reasoning as to why a separate IPR should be instituted. Thus, the PTAB denied the petition.

In the Standard Innovation Corp. v. Lelo, Inc. IPR, the petitioner sought to institute an IPR while concurrently filing a motion for joinder seeking to join the present proceeding with an earlier IPR proceeding involving the same patent and the same parties.

In its petition, Standard Innovation set forth grounds of unpatentability that differed from those presented in the initial IPR, which the petitioner acknowledged in saying that the “petition presents combinations of prior art references and arguments not previously presented or considered by the Board.” The PTAB therefore noted that joinder “could significantly expand” the pending IPR, and with that potential expansion in mind, the PTAB moved on to analyze the effect of such an expansion on the pending IPR’s schedule.

The petitioner argued that joinder would not impact the PTAB’s ability to complete the IPR in a timely manner and would not unduly delay the proceedings. In support of this argument, the petitioner noted that the petition could be considered expeditiously because the PTAB had previously considered the challenged claims. Further, the petitioner argued that little if any additional discovery would be required, as the petitioner would utilize the same expert.

The PTAB did not find the petitioner’s arguments persuasive. First, the petition would add several asserted grounds and prior art not considered in the IPR. Second, the petitioner ignored that the IPR had progressed with respect to the instituted claims but had not progressed with respect to the claims the petitioner sought to add. Third, though the petitioner proposed an amended schedule for the IPR, the schedule did not address how the petition could be joined to the IPR without significantly impacting the IPR schedule.

The PTAB further noted that, contrary to the petitioner’s conclusory assertions, adding asserted grounds, art and arguments “could significantly lengthen the [pending] IPR” and would “increase notably cost and effort by Patent Owner and the Board.”

Ultimately, the PTAB determined that the petitioner had failed to present a persuasive argument to explain why the grounds of unpatentability asserted by the petition could not have been asserted in the earlier IPR and denied the motion for joinder.

Practice Note:  These two decisions indicate a growing trend at the PTAB to exercise its discretion to refuse institution of an IPR where sequential petitions are filed by the same party.  See IP Update, Vol. 17, No. 11.