Medtronic, Inc. v. NuVasive, Inc.

Informative decision only: persuasive authority, not binding precedent. When a petition challenges the same claims of the same patent on the same prior art and nearly identical grounds as a previously denied petition, and the petitioner is also a party to an instituted proceeding on all of those claims and offers no persuasive reasoning for a further review, the Board may exercise its discretion under 35 U.S.C. § 325(d) to deny institution. Section 325(d) permits the Director to 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." No prior precedent directly addressed this issue in the text; the decision names no earlier Board decision. For a petitioner, a follow-on petition that reuses the prior art and nearly identical challenges from a denied petition, and that claims to cure the earlier petition's noted deficiency, is at serious risk of denial under § 325(d), particularly if the petitioner is already in an instituted trial on the same claims. A bare statement that the grounds rely on different references from the instituted proceeding was not enough, and the Board wanted specific reasoning. For the patent owner, the decision supports a preliminary response that identifies the petition as a duplicate of a denied petition and points to the parallel instituted proceeding on the same claims. The decision cites no Federal Circuit, CCPA or Supreme Court authority; it relies only on 35 U.S.C. §§ 314(a) and 325(d) and 37 C.F.R. § 42.108. LEGAL TEST OR STANDARD: The Board applied no multi-factor test. It applied 35 U.S.C. § 325(d), under which 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." It decided "[b]ased on the totality of the facts before us" and asked whether Petitioner gave persuasive reasoning to institute review over the same or substantially the same prior art or arguments. It also considered that Petitioner was involved in a parallel proceeding on all the same claims. TRIGGERING FACTS: Petitioner had earlier filed two petitions against the same patent, the '504 Petition (denied) and the '506 Petition (trial instituted on claims 1-14, 19, 20 and 23-27, the same claims challenged here). The new Petition presented the same prior art as the '504 Petition, with proposed challenges to the same claims that were nearly identical. It relied on Frey for the same claim 1 limitation. Petitioner said it remedied the noted deficiency and added new arguments and evidence, but gave no specific reasoning that its grounds were not redundant of the instituted trial, other than that they used different references. KEY QUOTE: "Petitioner has not provided any persuasive reasoning as to why we should institute inter partes review over “the same or substantially the same prior art or arguments” that were presented by the ’504 Petition." (Paper 8, p. 7) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Before filing a follow-on petition on a patent and claims already challenged, explain specifically why the Board should not apply 35 U.S.C. § 325(d), and why the new grounds are not redundant of any instituted proceeding. A statement that the petition cures a denied petition's deficiencies or uses different references is not enough. Patent owners should use the preliminary response to show the overlap with the earlier petition and the parallel trial.