Federal Circuit Affirms IPR Estoppel Under 35 U.S.C. § 315(e)(1) For Simultaneous Petitions
On February 11, 2022, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the Patent Trial and Appeal Board (PTAB) terminating a petitioner’s participation in an inter partes review (IPR) based on the estoppel provision of 35 U.S.C § 315(e)(1). Intuitive Surgical Inc. v. Ethicon LLC, No. 2020-1481 (Fed. Cir. Feb. 11, 2022).
Under 35 U.S.C § 315(e)(1), once a final written decision on the claim of a patent is made by the PTAB, the petitioner “may not request or maintain” an IPR proceeding “with respect to that claim on any ground that the petitioner raised or reasonably could have raised” during the former IPR.
This appeal involved a dispute between Intuitive Surgical Inc., a manufacturer of robotic surgery tools, and Ethicon LLC, the owner of U.S. Patent No. 8,749,969 (“the ’969 patent”) directed towards a robotically controlled endoscopic surgical instrument. On June 14, 2018, Intuitive filed three IPR petitions to challenge the patentability of claim 24 of the ’969 patent. Each petition challenged Claim 24 as obvious, and each petition referenced a different combination of prior art references. Thereafter, the petitions resulted in the institution of three different IPR proceedings, one based on references to Timm and Anderson, one based on references to Giordano and Wallace, and one based on references to Prisco and Cooper. The last of these was instituted one month after the others.
In part due to this later institution, the PTAB issued final written decisions in the Timm/Anderson and Giordano/Wallace IPRs prior to the conclusion of the Prisco/Cooper IPR. As a result, in its final written decision of the Prisco/Cooper IPR, the PTAB found that Intuitive Surgical was estopped from participating as a party.
Intuitive appealed, arguing that (1) the 14,000-word page limit for IPR petitions meant that they could not reasonably have raised the Prisco/Cooper prior art in the same petition as the others, (2) it could not have raised Prisco or Cooper during the other proceedings because new grounds cannot be added after institution, and (3) estoppel could not apply because the petitions were filed at the same time.
The CAFC disagreed, affirming that Intuitive Surgical was estopped because the requirements of 35 U.S.C. § 315(e)(1) had been fulfilled. The PTAB had released a written final decision on Claim 24 of the ’969 patent, and Intuitive Surgical could have included the Prisco and Cooper references in the previous IPR petition. The CAFC rejected Intuitive Surgical’s arguments, both because Intuitive Surgical could have phrased its petitions more succinctly, and because the plain language of the statute makes no reference to when the petitions are filed.