One of the advantages for Petitioners of inter partes review practice, to date, is the PTAB’s willingness to reconsider prior decisions by the Patent Office relating to patentability. Previous Office determinations of patentability in examination, ex parte reexamination, and inter partes reexamination are often given little deference in IPR proceedings. But even the Board can only take so much. In Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Petitioner failed in its third bite at the apple for a patent that was previously challenged by IPR petition. Order at 5.

According to Patent Owner, the Petition was “essentially a duplicate of the previously denied petitions,” and should be denied pursuant to 35 U.S.C. § 325(d). Id. Petitioner argued that the denial of the old Petition had no bearing on this case. Id. at 6. The revised Petition directly responded to a “noted deficiency,” and new evidence and argument were provided to cure that deficiency.

The Board agreed with Patent Owner, beginning its analysis by citing to § 325(d): “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, 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.” 35 U.S.C. § 325(d). Id.

In view of the fact that Petitioner did not provide any persuasive reasoning as to why an inter partes review should be instituted over “the same or substantially the same prior art or arguments” that were presented in the old Petitions, the Petition was denied. Id. at 7.