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It’s often said that “you don’t get a second chance to make a first impression” and Metronic found that out in the inter partes review context. A couple of weeks ago, the Patent Trial and Appeal Board (“PTAB”) denied Metronic’s petition for inter partes review in Medtronic, Inc. v. Nuvasive, Inc., one of three petitions filed by Metronic against Nuvasive.

Metronic filed its petition for review of Nuvasive’s U.S. Patent No. 8,31,156, which discloses a system and method for performing spinal implants. Spinal implants are used in “spinal fusion” procedures in which portions of a diseased spinal disc are removed. The spinal implant is then placed into the disc space where the disc, or portions of the disc, were removed. The Back Pain Authority, an education and advocacy group, notes that implants have become a “hot” technology in the industry ever since artificial disc replacements have had some success.  According to the Back and Pain Authority, spinal implants are generally designed to accomplish one of three goals. These are: 1) to stabilize and assist fusions to bond strong and last long; 2) to serve as an artificial disc or synthetic disc nucleus, which will replace a damaged or worn out organic disc structure; and, 3) maintain spinal alignment and vertebral spacing. These typically are used to prevent bone on bone contact, stenosis of the central canal or foraminal spaces and/or various types of arthritic expressions.

The Board’s first step in determining whether Metronic was entitled have its petition granted was to reiterate that the petition must show a reasonable likelihood that the Petitioner would prevail with respect to at least one claim of the patent at issue (see 35 U.S.C. 314(a) and 37 CFR 42.108(c)).

The Board then went on to review other litigation between the parties, noting that Metronic had filed two other petitions for inter partes review with respect to the ‘156 patent.  One of Metronic’s prior petitions (the ‘506 petition) was pending. The other, the ‘504 petition, had been denied.  Metronic claimed that it filed its current petition only to remedy errors in the previously-denied petition (the ‘504 petition). Nuvasive, on the other hand, argued that Metronic was unfairly trying to get a third bite at the apple.

Citing 35 U.S.C. 325(d), the Board noted that review should be denied where the same or substantially the same prior art or arguments were previously presented.  Metronic argued that the instant petition was not redundant to the ‘506 petition because the instant petition relied on different prior art. As to the ‘504 petition, as noted, Metronic argued that the instant petition was filed to correct errors in that petition. The PTAB, however, rejected  Metronic’s argument and held that the current petition was a duplicate of Metronic’s prior petitions.

Because the Board based its decision on a “totality of the facts”, it’s a bit difficult to discern which of Metronic’s prior petitions ran afoul of 35 U.S.C. 325(d).  But the Metronic case certainly provides some important take homes. First, petitioners will need to be very cautious when refiling to correct deficiencies in a prior denied petition for inter partes review.  Also, petitioners may encounter difficulty when filing a second petition on different prior art where the same patent claims are involved. In other words, petitioners may need to more carefully consider whether they have submitted all relevant prior art before filing their petition where review is being sought on the same patent claims.

This post is intended to convey general information only and should not be construed as a legal opinion or legal advice.  We disclaim liability for any errors or omissions and readers should not take any action that relies upon the information contained herein. Readers should consult their own attorney concerning their own situation and  any specific legal questions. The writing herein does not establish any form of attorney-client relationship with us.

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