Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487: Decision Denying Institution
Tuesday, September 30, 2014

Takeaway: The Board can deny a petition for being substantially identical to a previous request, even if the new petition is to remedy the previous request.

In its Decision, the Board declined to institute inter partes review, using its discretion under 35 U.S.C. § 325(d). Petitioner had filed two other petitions related to the ’156 Patent. One was instituted, the other was not. This Petition was intended to remedy the deficiencies of the IPR that was not instituted. The ’156 patent is drawn to a spinal implant, and methods of spinal fusion using the implant.

Patent Owner argued that the instant Petition “is essentially a duplicate of its previously denied petitioner in the ’504 IPR.” Under 35 U.S.C. § 325(d), the Board “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.” Petitioner argued that it was responding to a deficiency in the previous IPR by providing new evidence and argument as to how the previously supplied prior art renders the challenged claims obvious. Further, Petitioner argued that the grounds are not redundant to those instituted in the ’506 IPR, given that the grounds are based on different prior art references.

The Board exercised its discretion under 35 U.S.C. § 325(d) and denied the Petition, because Petitioner did not provide persuasive reasoning why to institute over the “same or substantially the same prior art or arguments” that were presented by the ’504 Petition, especially when the ’506 IPR involves all of the same claims challenged in this Petition.

Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487
Paper 8: Decision Denying Institution of Inter Partes Review
Dated: September 11, 2014
Patent 8,361,156 B2
Before: Sally C. Medley, Lora M. Green, and Stephen C. Siu
Written by: Green
Related Proceedings: Warsaw Orthopedic, Inc. v. NuVasive Inc., No. 3:12-cv-02738-CAB-MDD (S.D. Cal.); IPR2014-00504; and IPR2014-00506

 

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