FC panel affirms Board dismissal of third IPR following patentability finding in other simultaneously filed IPRs regarding the same claims under section 315(e)(1)

Intuitive Surgical, Inc. v. Ethicon LLC (USPTO as intervenor)

Docket No. 2021-1481 (IPR2-18-01248) (https://cafc.uscourts.gov/opinions-orders/20-1481.OPINION.2-11-2022_1907139.pdf)

O’MALLEY, CLEVENGER, STOLL

February 11, 2021

Brief Summary:  Intuitive’s appeal of pending IPR in view of patentability findings in two simultaneously filed IPRs regarding the same claim dismissed as prohibited by section 315(e)(1).

Summary:  Intuitive appealed PTAB (“Board”) IPR decision upholding the patentability of claims 24-26 of US 8,479,969 relating to “a robotically controlled endoscopic surgical instrument”.  “The threshold question in this appeal is whether Intuitive is authorized by statute to pursue this appeal” or, as the Board found in terminating Intuitive as a party under 35 U.S.C. [section] 315(e)”, estopped.  Intuitive filed three IPR petitions that all challenged the patentability of ‘969 claim 24 (“the Timm/Anderson IPR” (IPR2018-01247), “the Prisco/Cooper IPR” (IPR2018-01248), and “the Giordano/Wallace IPR” (IPR2018-01254).  The Board upheld the patentability of claim 24 in final written decisions (FWDs) the Timm/Anderson (along with claims 25-26) and Giordano/Wallace IPRs (affirmed by the FC panel separately).  The Prisco/Cooper IPR was pending as of the date the FWDs in the other IPRs were issued, and “Ethicon filed a motion to terminate Intuitive as a party…arguing that Intuitive was estopped…by virtue of” the other FWDs “in the companion IPRs.”  The Board “upheld the patentability of claims 24-26 on the merits” and agreed with Ethicon that Intuitive was estopped since, e.g., “[section] 315(e)(1) did not preclude estoppel from applying where simultaneous petitions were filed by the same petitioner on the same claim.” Intuitive argues in this appeal that “estoppel should not apply to simultaneously filed petitions” and that it may appeal since it “was once ‘a party to an’” IPR “and is dissatisfied with the Board’s decision within the meaning of [section] 319.”  The FC panel explained that while it “may not review Board decisions reconsidering and terminating an institution decision, [it is] not precluded by the [section] 314(d) statutory appeal bar from reviewing the Board’s [section] 315(e)(1) estoppel decision” (Facebook, FC 2020; Uniloc, FC 2021).  Section 315(e)(1) “states that ‘[t]he petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision . . . may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.’”  “Intuitive alleges that the Board erred because Intuitive could not ‘reasonably have raised’ its grounds from the Prisco/Cooper IPR in the simultaneously filed Timm/Anderson and Giordano/Wallace petitions” due to “the 14,000-word limit imposed on petitions necessitated three separate petitions to present all the prior-art combinations on which it wished to rely”, “new grounds cannot be added after institution” (SAS, US 2018), and “simultaneous filings are not “as abusive” as successive filings.”  The FC panel disagreed, finding “that Intuitive actually knew of the Prisco prior art at the time it filed the other two petitions and knew which claims it wanted to challenge based on that art” and “reasonably could have raised its grounds from the Prisco/Cooper IPR in either” of the other IPRs (e.g., “the three petitions could not have been more concisely written to fit in only two petitions”, “[o]nce § 315(e)(1) prohibited Intuitive from maintaining this IPR, Intuitive ceased to be a party under § 141 and § 319”).  Thus, Intuitive’s appeal was dismissed.

This entry was posted in Appeal, Inter Parties Review (IPR), IPR. Bookmark the permalink.

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