Takeaway: A motion for joinder likely will be denied and trial not instituted, where the later-filed Petition by the same Petitioner as the earlier proceeding challenges the same claims over the same or substantially the same prior art or arguments presented in the earlier proceeding.

In its Decision, the Board denied Petitioner’s Motion for Joinder and denied institution ofinter parties review as to the challenged claims (15-19) of the ’832 Patent. Petitioner filed its Petition along with a Motion for Joinder requesting to join IPR2014-00325 (“the ’325 proceeding”). The Board had instituted trial in the ’325 proceeding on the same claims raised in Petitioner’s Petition. The ’832 Patent relates to compositions and methods for treating narcotic dependence using an orally dissolvable film comprising buprenorphine and naloxone, where the film provides a bioequivalent effect to Suboxone®, which is an orally dissolvable tablet of buprenorphine and naloxone.

Patent Owner requested the Board to exercise its discretion under 35 U.S.C. § 325(d) to deny this Petition. 35 U.S.C. § 325(d) provides the Board with discretion to reject a petition on the basis of being the same or substantially the same prior art or arguments previously presented to the Office. In the ’325 proceeding, the Petition included grounds based on Labtec as the primary reference and separate grounds based on Euro-Celtique as the primary reference. In that Petition, Petitioner did not provide any meaningful advantage of the Euro-Celtique-based grounds over the Labtec-based grounds. Instead, Petitioner argued that the grounds are not cumulative because Labtec explicitly identifies and understands the criticality of pH to modify absorption, which Patent Owner argued was not present in Euro-Celtique. Thus, the Board instituted only the Labtec-based grounds in the ’325 proceeding.

Petitioner’s Petition in this proceeding resubmitted the Euro-Celtique-based grounds in slightly different combinations from those asserted in the ’325 proceeding. However, the Board found that substantively the grounds were not different from those asserted and not instituted in the ’325 proceeding. Thus, the Board denied to institute trial in this proceeding, because Petitioner failed to provide any persuasive reasoning as to why the Board should institute another inter partes review of the same challenged claims over “the same or substantially the same prior art or arguments” that were presented in the ’325 proceeding.

BioDelivery Sciences International, Inc. v. RB Pharmaceuticals Limited, IPR2014-00998
Paper 12: Decision Denying Petitioner’s Motion for Joinder and Denying Institution of Inter Partes Review
Dated: December 19, 2014 Patent: 8,475,832 B2
Before: Toni R. Scheiner, Jacqueline Wright Bonilla, and Zhenyu Yang
Written by: Yang
Related Proceedings: IPR2014-00325; Reckitt Benckiser Pharmaceuticals, Inc. v. BioDelivery Sciences International, Inc., No. 5:13-cv-760 (E.D.N.C.); BioDelivery Sciences International, Inc. v. Reckitt Benckiser Pharmaceuticals, Inc., No. 14-cv-529 (E.D.N.C.)