Takeaway:  When a petition for inter partes review in a first proceeding presents substantially the same prior art, and substantially the same arguments, as presented by the petition in another inter partes review proceeding, the Board may exercise its discretion to deny institution of review in the first proceeding under 35 U.S.C. § 325(d).

In its Decision, the Board denied the Petition for Inter Partes Review with respect to challenged dependent claims 5 and 10 of the ’565 patent, and dismissed as moot Petitioner’s unopposed Motion for Joinder with IPR2013-00539 (the ’539 IPR).  According to the Board, the Petition presented “substantially the same art and arguments” as presented by the Petition in the ’539 IPR.

The ’565 patent relates to improvement in the production of fuels, chemicals and amino acids by way to increasing Dihydroxy Acid Dehydratase (DAHD) activity, and to recombinant yeast microorganisms with increased DHAD activity.  In the ’539 IPR, the Board had instituted inter partes review of claim 5 of the ’565 patent based on a four-reference obviousness ground, but had declined to institute review of claim 5 on a ground of anticipation based on Flint.  In the instant proceeding, Petitioner repeated its assertion that claim 5 of the ’565 patent is anticipated by Flint, but this time, for priority purposes, relied upon and made of record the ’905 application which, in turn, was incorporated by reference in the ’333 provisional application from which the ’565 patent claims domestic priority.

The Board exercised its discretion and denied institution of review of claim 5 based on Flint in the instant proceeding because: Flint was the same prior art reference as asserted for anticipation purposes in the ’539 IPR (the only difference being that Petitioner corrected a misstatement it had made as to which document was incorporated by reference in the provisional Flint ’333 application, and had provided a copy of the ’905 application); and Petitioner had already succeeded in having inter partes review of claim 5 instituted in the ’539 IPR on other grounds.  Since the Board regarded the challenge to claim 5 as an improper attempt to request rehearing of the prior decision in the ’539 IPR that fell outside of the requisite time period, it denied Petitioner’s request to institute inter partes review of claim 5 as being anticipated by Flint.

As for claim 10, the Board had denied institution of review of this claim in IPR ’539 with respect to an obviousness based on four references: Anthony, Puig, Ojeda, and Overkamp.  In response, the Petition in the instant proceeding asserted obviousness with respect to claim 10 based on combinations in which Overkamp was essentially replaced by Dundon or Valadi.  As summarized by the Board, “the sole purpose of citing Dundon or Valadi in the instant Petition is to provide the same disclosure [Petitioner] previously contended was provided by Overkamp.”  The Board ended up denying institution of the four obviousness grounds asserted for claim 10 because: Petitioner had not contended that it did not have or know about the newly cited references at the time it filed the ’539 IPR; and the Board viewed the current challenges to claim 10 as “serial challenges to the same patent, by the same petitioner.”

Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2014-00581
Paper 8: Decision Denying Institution and Dismissing Motion for Joinder 
Dated: October 14, 2014 
Patent: 8,273,565 B2 
Before: Rama G. Elluru, Christopher L. Crumbley, and Kerry Begley 
Written by: Crumbley
Related Proceedings: Gevo, Inc. v. Butamax ™ Advanced Biofuels LLC, No. 12-1202(SLR) (D. Del.), filed September 25, 2012; ButamaxTM Advanced Biofuels LLC v. Gevo, Inc., No. 12-1201(SLR) (D. Del.), filed September 25, 2012; IPR2013-00539 (the ’539 IPR, in which the Board instituted review of claims 1–9 and 11–19, but denied review of claim 10)