In IPR proceeding involving Medtronic, Inc. v. NuVasive. Inc., the petitioner, Medtronic, file a petition seeking review of U.S. Patent No. 8,361,156 relating to a spinal implant and methods of spinal fusion using the implant. The petition was Medtronic's third IPR petition challenging the validity of claims in the '156 patent. One of the two earlier petitions was granted while the other was denied. According to Medtronic, the instant petition "remedies the deficiencies of the [earlier denied] petition, and also adds new arguments and evidence as to the length disclosure of [prior art publication to Frey]."
In its preliminary response, the patent owner argued that the petition "is essentially a duplicate of its previously denied petition." As summarized below, the Board agreed with the patent owner and denied Medtronic's third challenge to the validity of claims of the '156 patent based on "the same or substantially the same prior art or arguments" presented in the earlier, denied petition.
The Board began is analysis by reciting the statutory authority allowing it to consider whether the petition is based on the same or substantially the same prior art or aguments previously presented:
As set forth in 35 U.S.C. § 325(d):
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.
According to the petitioner, the grounds in the instant petition are not redundant to those in the earlier petition because "those grounds are based on different prior art references and different arguments." The instant petition provides new evidence and argument in response to "a noted deficiency" in the earlier petition.
In rejecting the petitioner's argument, the Board noted that the instant petition involves the same patent and the same claims. Also, the petitioner "does not provide any specific reasoning to support [its] argument, other than to state that the grounds are based on different prior art references." The Board also rejected the argument that the prior art relied upon was not substantially the same presented in the earlier petition:
Moreover, the instant Petition presents the same prior art previously presented in the '504 Petition, and the proposed challenges to the claims are nearly identical to the proposed challenges in the '504 Petition. Compare Pet. 4, with '504 Petition 3 (same claims are challenged over the same prior art references). As in the '504 Petition, in the instant proceeding Petitioner is relying on Frey (Ex. 1003) for teaching, or suggesting, the limitation of claim 1 that the "implant has a maximum lateral width extending from said first sidewall to said second sidewall along a medial plane that is generally perpendicular to said longitudinal length, and said longitudinal length is greater than said maximum lateral width." Pet. 19, 48 (discussion of element "Claim 1 [E]"); see also IPR2013-00504, Paper 7, 6 (noting that Frey is relied upon as to all the asserted challenges to teach the recited limitation).
As a result, the Board concluded that the petition should be denied because it merely asserted "the same or substantially the same prior art or arguments" raised in the earlier, denied petition.
This decision highlights that pursuant to its statutory authority the Board will not hesitate to deny institution on grounds that they believe are "the same or substantially the same prior art or arguments" previously presented, whether in the same or different petitions. Medtronic, Inc. v. NuVasive. Inc., Case IPR2014-00487 (PTAB Sept. 11, 2014) (Paper 8) (A.P.J. Green)