Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.

Informative decision only: persuasive authority, not binding precedent. When a petitioner files a later IPR petition on the same patent and claims that relies on prior art whose teachings are substantially the same as art and arguments already presented in an earlier instituted petition, and offers no justification for the second filing, the Board may exercise its discretion under 35 U.S.C. §§ 314(a) and 325(d) and 37 C.F.R. § 42.108(b) to deny institution. Section 325(d) lets the Director take into account whether "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 Board reads § 325(d), which appears in the post-grant review chapter, as applying by its terms to inter partes review as well. For a petitioner, a follow-on petition built on a newly found reference will likely be denied if the reference's teachings track art already presented and the petition does not explain why it was filed or distinguish the new reference. For the patent owner, the decision gives a basis to resist serial petitions, and here it waived its preliminary response yet still obtained denial. The Board cited no Federal Circuit, CCPA or Supreme Court authority; it relied on the statute and regulation. LEGAL TEST OR STANDARD: No numbered factors were stated. Under 35 U.S.C. § 314(a) institution is discretionary, and under 37 C.F.R. § 42.108(b) the Board may deny some or all grounds for some or all claims. Under § 325(d), the Board may take into account whether, and reject the petition because, the same or substantially the same prior art or arguments previously were presented to the Office. The Board weighed the closeness of the grounds, the similarity of the art's teachings, the absence of justification for the new petition, and the petitioner's chance to address the art elsewhere. TRIGGERING FACTS: The same petitioner earlier petitioned on the same claims 1-8 of the same patent, and review was instituted on July 29, 2013. The second petition, filed June 4, 2013, had grounds that closely mirrored the instituted ones. Odedra was described with the same language used for Ju, and the claim charts showed similar disclosures. The petitioner said only that it learned of Odedra's relevance after the first filing, and it did not distinguish Odedra from the earlier art. The patent owner had also filed Odedra as an exhibit to its motion to amend in the first proceeding, so the petitioner could address it there. KEY QUOTE: "IBS does not distinguish any teaching present in Odedra that is lacking from Ju, Tsien, or any of the other references cited in the 128 Petition." (Paper 19, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Before filing a second petition against a patent already under instituted review, explain why it was filed and show how each new reference teaches something the earlier art lacks. Also, if the patent owner has put the new art into the first proceeding, expect the Board to say you can address it there.