Will Olson, a Law Clerk in Foley’s Milwaukee office, is a co-author of this article.
In Intuitive Surgical, Inc. v. Ethicon LLC, the U.S. Court of Appeals for the Federal Circuit recently affirmed that estoppel under 35 U.S.C. § 315(e)(1) can apply as between concurrently filed inter partes review (IPR) proceedings which are not all decided at the same time.1 The court also held that a party estopped from maintaining an IPR under § 315(e)(1) is no longer a party to that IPR and is barred from appealing a final written decision on the merits.2 As discussed below, the court proposed strategies petitioners can consider to avoid the consequences of this decision. The case arose out of a set of three concurrently filed IPR petitions from Intuitive Surgical, each of which challenged the patentability of various claims of US Patent No. 8,479,969 held by Ethicon. Claim 24 was common to all three petitions, and claims 25-26 were common to two of the petitions.
While the IPRs were filed concurrently, the Board instituted the first two in January 2019, and the third in February 2019.3 Intuitive Surgical requested and was granted a combined hearing for all three IPRs, and the Board issued a scheduling order indicating that the first two would likely be decided prior to the third. In January 2020, the Board issued final written decisions in the first two IPRs, finding claims 24-26 not unpatentable. In response, Ethicon filed a motion to terminate Intuitive Surgical as a party to the third IPR because it was estopped under § 315(e)(1) from maintaining a proceeding on grounds that they “reasonably could have raised” in the two previously decided IPRs. The Board granted Ethicon’s motion to terminate, while also finding claims 24-26 not unpatentable.4
Intuitive Surgical appealed to the U.S. Court of Appeals for the Federal Circuit, arguing first that estoppel was not warranted because they could not have reasonably raised the grounds of the third IPR in the first two petitions due to the 14,000 word-limit on petitions.5 Second, it contended that even if it was estopped from proceeding in the third IPR, it was not barred from appealing the final written decision because they had once been a party to that IPR.6
The Federal Circuit was not persuaded by either of Intuitive Surgical’s arguments. Addressing the first argument, the court explained that § 315(e)(1) estoppel applies to any IPR, whether filed concurrently or successively, where the petitioner “reasonably could have raised” the grounds in a previously decided proceeding.7 It noted Intuitive Surgical could have made its challenges more “pointed and specific” to fit all their grounds within the first two petitions while staying under the word limit.8 Alternatively, because § 315(e)(1) estoppel applies on a “claim-by-claim basis,” petitions directed to separate claim sets would not be subject to estoppel under § 315(e)(1). Finally, the court noted that Intuitive Surgical could have requested a consolidation of all three IPR decisions under 35 U.S.C. § 315(d), which would have resulted in a single final written decision. Any of these routes would have avoided § 315(e)(1) estoppel, but Intuitive Surgical failed to take advantage of them despite knowing that the third IPR would likely be decided after the first two, and thus could be susceptible to estoppel if the first two IPRs were not decided in Intuitive Surgical’s favor.9
Regarding standing to appeal, the court reiterated that the right to appeal a final written decision in an IPR proceeding is clearly limited, under 35 U.S.C. § 319 and 35 U.S.C. § 141(c), to a “party” to an IPR. Because Intuitive Surgical was estopped from maintaining its third IPR, the panel concluded that it was no longer a “party” as required by statute, and therefore had no right to appeal the final written decision on the third IPR.10
Intuitive Surgical’s struggles before the Board and the Federal Circuit serve as a reminder of the perils faced by multiple petitions directed at the same patent claims.11 To avoid estoppel when multiple petitions on a single patent are deemed necessary, petitioners should consider the Federal Circuit’s advice. Each petition could be directed to a different, non-overlapping claim set and incorporate the strongest challenges to patentability. Alternatively, where multiple petitions against the same claim set are desired, the petitions could be filed concurrently followed by a request for a consolidated written decision under § 315(d) which, if granted, should help avoid the harsh consequences of estoppel under § 315(e)(1).
1 Intuitive Surgical, Inc. v. Ethicon LLC, No. 2020-1481, ECF No. 12, p. 8 (Fed. Cir. 2022).
2 Id. at 12.
3 Id. at 3-4.
4 Id.
5 Id. at 7.
6 Id. at 11-12.
7 Id. at 8.
8 Id. at 9.
9 Id.
10 Id. at 12.
11 Indeed, the Board’s 2019 Consolidated Trial Practice Guide (p. 59) illustrates the Board’s concern with multiple petitions: “two petitions by a petitioner…should be rare. Further, based on prior experience, the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” The Guide goes on to advise petitioner to rank the petitions “in the order in which it wishes the Board to consider the merits,” and provide a succinct explanation of the differences between the petitions. Id., 60.
