Petitioner Metronic had previously filed two other petitions for IPR of a patent. The Board instituted trial on one of the petitions and denied the other. Medtronic then filed a third petition for IPR of the patent that purportedly remedied a “noted deficiency” of the denied petition and also “add[ed] new arguments and evidence” regarding a particular prior art reference. Patent Owner Nuvasive argued the third petition was “essentially a duplicate of its previously denied petition.”

The Board observed that the third petition presented the same prior art previously presented in the denied petition. And the pending trial involved the same claims as the third petition. Medtronic argued that the grounds of the third petition are not redundant of those in trial. But, in the Board’s view, Metronic did not provide any specific reasoning to support that argument, other than to state that the “grounds are based on different prior art references.”  In short, the Board rejected the third petition under 35 U.S.C. § 325(d) because Medtronic did not provide “any persuasive reasoning as to why [the Board] should institute inter partes review over ‘the same or substantially the same prior art or arguments’ that were presented by” the previously denied petition and because the instituted trial “involves all of the same claims challenged here.”

This decision shows the Board is willing to exercise its broad discretion to deny a petition for IPR when the petitioner is using the Board’s previous denial to tweak the form of the petition, particularly when the petitioner is already going to trial on the claims.

Informative Opinion: Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Paper 8 (Sept. 11, 2014)

Before Medley, Green, and Siu, Administrative Patent Judges