The AIA granted the Board broad discretion to determine how a matter will (or will not) proceed if another matter involving the same patent has been brought before the USPTO, especially where “the same or substantially the same prior art or arguments were previously presented to the Office.”See 35 U.S.C. § 325(d).

The Board recently exercised this discretion in an “informative” decision denying an IPR petition inMedtronic, Inc. v. NuVasive, Inc., IPR2014-00487, Paper 8 (Sept. 11, 2014). The petitioner had previously filed two IPR petitions challenging the same patent. The Board denied one petition and instituted the other. The petition here admitted that it was “essentially a duplicate” of the denied petition, but contended that it corrected deficiencies, provided new evidence and arguments, and presented grounds that were not redundant to the grounds presented in the instituted petition. The Board rejected petitioner’s arguments based on three key points:

  1. The new petition failed to “provide any specific reasoning” to support the argument that its grounds were not redundant to the grounds in the instituted petition other than stating that “those grounds are based on different prior art references and different arguments”;
  2.  The instituted proceeding involved the same patent and claims, with oral argument already scheduled for November; and
  3. The grounds proposed in the new petition were “nearly identical” to the grounds proposed in the denied petition.

The decision provides practitioners a few key takeaways. First, petitioners wanting to file a second petition challenging the same patent should attempt to file it with the first petition, or shortly thereafter, so the Board can institute the proceedings together and place them on the same schedule, eliminating any concerns of inefficiency. Second, the Board has the discretion to cite inter-petition redundancy to deny a second petition, so petitioners would be well-served to specifically explain how the grounds in a follow-on petition differ from the grounds in previous petitions—even when filed by different parties. Finally, petitioners should take care that their original petitions are not marred by any institution-threatening flaws (e.g., lacking discussion of a motivation for combining two references in a obviousness ground), as the Board may apply § 325(d) to deny a later petition attempting to correct those flaws because it presents identical or nearly identical grounds.