In Zimmer Holdings, Inc. and Zimmer, Inc. v. Bonutti Skeletal Innovations LLC, (Case IPR2014-01080), the PTAB denied Zimmer’s petition to institute an IPR trial against Bonutti’s U.S. Patent No. 7,806,896 because the proposed combination of prior art references was previously considered and denied by the PTAB. 

Zimmer filed a petition seeking review of claim 43 of the ‘896 patent based on three prior art references (PCT International Publication No. WO 93/25157, Computer-Integrated Orthopaedic Surgery:  Connection of Planning and Execution in Surgical Intervention, Computer-Integrated Surgery (Russell H. Taylor et al. eds., 1996), and U.S. Patent No. 4,567,885).  However, Zimmer previously requested review of claim 43 in view of the same prior art (Case IPR2014-00321).  In this previous matter, the PTAB did not institute review of claim 43 because Zimmer failed to demonstrated a reasonable likelihood of prevailing with respect to its contention that claim 43 would have been obvious in view of the prior art.  More specifically, the PTAB found that Zimmer failed to provide sufficient reason why one of ordinary skill in the art would combine the prior art teachings and arrive at the subject matter of claim 43.  In its latest petition, Zimmer sought to correct its prior defects by setting forth the specific reasons why Zimmer believes it would have been obvious to a person of ordinary skill in the art to combine the cited prior art. 

In denying Zimmer’s latest petition seeking review of claim 43 of the ‘896 patent, the PTAB exercised its discretion under rarely used 35 U.S.C. § 325(d) and found that the “same prior art” was “previously presented” to the PTAB with respect to the same claim.  As explained by the PTAB in its Decision, Zimmer simply presented an argument that it could have made in the earlier petition if it had chosen to do so.  In view of the PTAB’s reluctance to allow petitioners a second bite at the apple, it is vital that petitioners sufficiently set forth each and every proposed rejection the original petition.  Failure to so may preclude an otherwise viable ground of rejection from being pursued in an IPR proceeding.