Takeaway: If a petitioner is filing a new petition using the same art that the Board previously considered in denying institution, then the petitioner must show why it is entitled to a second chance at making the same argument.

In its Decision, the Board denied institution of inter partes review of claim 43 of the ’896 Patent, and dismissed Petitioner’s Motion for Joinder with IPR2014-00321.  The ’896 Patent relates to a method for performing joint replacement surgery.

In IPR2014-00321, Petitioner asserted that claim 43 was unpatentable in view of Radermacher ’157, Radermacher Article, and Androphy. The Board did not institute review based on this ground because the only motivation to combine provided by Petitioner was that the references are analogous art.  In this proceeding, Petitioner relied upon the same prior art and stated that it provided “more fully articulated reasons why it would have been obvious to a person of ordinary skill in the art to combine the references.”  The Board did not reach the merits of the additional reasoning and instead used its discretion under 35 U.S.C. § 325(d) to deny the Petition for previously presenting the same or substantially the same prior art to the PTO.  The Board found in this case Petitioner is requesting a second chance to address claim 43, but has not provided a reason that merits a second chance.  Petitioner has only presented an argument that it could have made previously if it had chosen to do so.

Because the Petition was denied, the Board dismissed the motion for joinder as moot.

Zimmer Holdings, Inc. and Zimmer, Inc. v. Bonutti Skeletal Innovations LLC, IPR2014-01080
Paper 17: Decision Denying Institution of Inter Partes Review and Dismissing Motion for Joinder
Dated: October 31, 2014
Patent: 7,806,896 B1
Before: William V. Saindon, Michael R. Zecher, and Richard E. Rice
Written by: Saindon
Related Proceedings: Bonutti Skeletal Innovations LLC v. Zimmer Holdings, Inc., No. 1:12-cv-01107-GMS (D. Del.); IPR2014-00321; IPR2014-00191; IPR2014-00311: IPR2014-01078; IPR2013-00605; IPR2013-00620; IPR2013-00621