In July 2013, Cardiocom filed a petition for IPR of a patent.  Petitioner Medtronic then acquired Cardiocom.  In January 2014, the Board decided to move forward on eight claims and declared trial on two obviousness grounds, each based on a combination including two prior art references.  In February 2014, Medtronic filed its own petition for IPR of the patent, seeking to invalidate all 22 claims.  The Medtronic petition raised two purported grounds of unpatentability: one that partly relied on the two references from the Cardiocom petition and one that partly relied on one of the references.

With respect to the eight claims already going to trial, the Board remarked that the two petitions raised substantially the same art and arguments.  Both petitions raised the same references.  Both petitions presented those references as disclosing the same limitations with substantially the same support and arguments.  And both petitions acknowledged the same deficiencies for the references.  The Board pointed out that Medtronic was a real-party-in-interest in both proceedings and was already going to trial on “substantially the same art and arguments.”  The Board therefore exercised its discretion under 35 U.S.C. § (d) and rejected the Medtronic petition as to the eight claims.

The Board declined to institute trial on the remaining claims because Medtronic had not shown sufficient evidence of a reasonable rationale for combining the prior art.

This decision illustrates that the Board is willing to exercise its broad discretion to deny a petition to institute an IPR in cases when a real-party-in-interest is already getting its “day in court” on what the Board perceives to be the party’s core arguments.

Siu, Arbes, and Quinn

Informative Opinion: Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00436, Paper 17 (P.T.A.B. June 19, 2014)