The PTAB may have shed some light on how it will address multiple petitions attacking the same claims of the same patent by the same petitioner. Specifically, in Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19 (Nov. 21, 2013), the Board invoked . “Several months prior to filing the instant petition, [Petitioner] filed a petition on January 29, 2013, that requested inter partes review of claims 1-8 of the . . . patent. . . . On July 29, 2013, the Board granted the . . . Petition, and instituted inter partes review of claims 1-8.” The Board denied the petition, explaining that “Congress did not mandate that an inter partes review must be instituted under certain conditions. Rather, by stating that the Director—and by extension, the Board—may not institute review unless certain conditions are met, Congress made institution discretionary. In determining whether to institute an inter partes review, the Board may ‘deny some or all grounds for unpatentability for some or all of the challenged claims.’ 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).
“Our discretion is further guided by 35 U.S.C. § 325(d), which reads as follows (emphasis added) . . . 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 Office.”
“Several factors counsel against institution in the present case. As we noted above, in the [earlier IPR proceeding, Petitioner] requested inter partes review of claims 1-8 of the [same] patent, and we granted that petition on several grounds that mirror closely those presented in the instant petition. . . . Furthermore, we note that [Petitioner] has not provided any justification for filing the instant petition, other than its representation that it became aware of the relevance of [the reference relied on in the later-filed petition] after the filing of the [earlier petition]. [Petitioner] does not distinguish any teaching present in [the reference cited in the second petition] that is lacking from [the references on which trial was instituted] in the [earlier proceeding].” Thus, the Board stated that “[i]n light of the foregoing, and exercising our discretion under 35 U.S.C. §§ 314(a) and 325(d), and 37 C.F.R. § 42.108(b), we decline to institute an inter partes review in the instant proceeding.”