Denying Institution For Failure to Explain Why Not Substantially the Same as Asserted in Prior Proceeding IPR2015-01476


Takeaway: The Board may exercise its discretion to deny institution of a petition filed by the same petitioner against the same patent as a previous proceeding if there is no showing that the new grounds are better or that the new grounds could not have been raised in the earlier proceeding.

In its Decision, the Board denied institution of all challenged claims (1, 4, 5, 8-10, and 12) of the ’773 Patent. The ’773 patent describes endodontic files that allegedly “have high flexibility, have high resistance to torsion breakage, maintain shape upon fracture, can withstand increased strain, and can hold sharp cutting edges.”

This proceeding involves the same patent and the same parties as IPR2015-00632, in which trial was instituted on August 5, 2015. All of the claims challenged in this proceeding are already underway in the trial of IPR2015-00632. Petitioner proposed two additional grounds of unpatentability involving two additional references. However, Petitioner did not explain why those additional grounds are better than the grounds already at issue in IPR2015-00632. Thus, the Board determined that Petitioner did not explain why the grounds based on the additional references “are not understood reasonably as being based on ‘substantially the same prior art or arguments’ that were presented in the ’632 IPR.” Further, Petitioner did not articulate a reason why it could not have offered the proposed grounds as part of IPR2015-00632. Accordingly, the Board exercised its discretion and denied institution of this proceeding, because the grounds asserted are “redundant” and denying institution secures “a just, speedy, and inexpensive resolution of the proceedings,” as urged by Patent Owner.

US Endodontics, LLC v. Gold Standard Instruments, LLC, IPR2015-01476
Paper 13: Decision Denying Institution of Inter Partes Review
Dated: October 26, 2015
Patent 8,727,773 B2
Before: Josiah C. Cocks, Hyun J. Jung, and Timothy J. Goodson
Written by: Cocks
Related Matters: Dentsply International, Inc. and Tulsa Dental Products LLC d/b/a Tulsa Dental Specialties v. US Endodontics, LLC, Case No. 2:14-cv-00196-JRG-DHI (E.D. Tenn.); IPR2015-00632