In January 2013, Petitioner IBS filed a petition for IPR.  Five months later, IBS filed a second petition for IPR on the same patent claims.  The follow-on petition relied on art from the first petition and other prior art, including a new reference anchoring each purported anticipation and obviousness ground.  In July 2013, the Board granted the first petition.  Patent Owner Illumina then filed a non-contingent motion to amend requesting cancellation of the original claims in favor of four substitute claims.  As part of the obligation to demonstrate how the proposed substitute claims are patentable over the known prior art, Illumina filed the new anchoring reference from the second petition as an exhibit to the motion to amend.

The Board concluded that it had discretion to reject the second petition under both 35 U.S.C. §§ 314(a) and 325(d).  With respect to the former, the Board noted that “Congress did not mandate that an inter partes review must be instituted under certain conditions,” but instead provided that the Board “may not institute review unless certain conditions are met.”  And as to the latter, the Board echoed Congress’s permissive language that, “[i]n determining whether to institute or order a proceeding . . . the Director may take into account whether, and reject the Petition or request because, the same or substantially the same prior art or argument previously were presented to the Office.”

The Board concluded that “[s]everal factors counsel against institution in the present case.”  Both petitions presented anticipation grounds.  And both petitions presented obviousness grounds with similar secondary references.  Although the obviousness grounds used different primary references, IBS’s arguments about the art were similar between the petitions.  Furthermore, IBS did not justify why it filed the second petition, other than representing that it became aware of the new reference after filing the first petition.  IBS did not distinguish any teaching in that reference that was missing from the art in the first petition.  And finally, the Board noted that it would consider the new reference in the first petition in the context of the patentability of the proposed substitute claims.  Based on these equities, the Board declined to institute IPR on the second petition.

This decision demonstrates the Board’s considerable discretion to deny a follow-on petition with arguments substantially similar to those in an earlier petition, even when the follow-on petition relies on a different anchoring reference.

Before Green, Katz, and Crumbley, Administrative Patent Judges

Informative Opinion: Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19 (P.T.A.B. Nov. 21, 2013)