Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, Case IPR2013-00324 (Nov. 21, 2013) (Paper 19)
The Board has broad discretion to deny “follow-on” petitions. The Board will not institute a follow-on petition that presents “the same or substantially the same prior art or argument” as a first petition by the same petitioner simply because the follow-on petition relies on a new prior art reference that the petitioner discovered only after filing the first petition.
Summary (Informative) :
Petitioner Intelligent Bio-Systems, Inc. (“IBS”) challenged U.S. Patent No. 7,057,026 (“the ’026 Patent”) in two separate IPR petitions. Both petitions challenged claims 1-8 of the ’026 Patent. The Board instituted IPR for claims 1-8 for the first petition. Patent Owner thereafter filed a non-contingent motion to amend requesting cancellation of original claims 1-8 of the ’026 patent and entry of substitute claims 9-12. The Board had not yet ruled on that motion by the time the Board decided whether to institute the second petition.
The Board exercised its discretion under 35 U.S.C. § 325(d) and denied the second petition, concluding that the first petition “presented the same, or substantially the same, prior art and arguments to the Office as those in the [second] petition.”
In both petitions, IBS argued that claims 1-6 are anticipated by prior art and that the anticipatory prior art also rendered claims 7 and 8 obvious in combination with secondary references. The second petition was different from the first petition in that the second petition replaced the anticipatory prior art cited in the first petition with a new anticipatory prior art reference. The Board found that the relevant disclosure of this new prior art reference was “substantially the same” as the disclosure in the anticipatory prior art cited in the first petition.
The Board noted that the only justification that IBS provided for filing the second petition was that it first became aware of the new prior art only after filing the first petition. The Board emphasized that IBS did not assert that any teaching of the new anticipatory prior art is lacking from the anticipatory prior art cited in the first petition.