Got A Lot To Say? Unfortunately, CAFC Affirm A Word Limit Will Not Prevent Estoppel Under 35 USC §315(e)(1)
| April 1, 2022
Intuitive Surgical, Inc., vs., Ethicon LLC and Andrew Hirshfeld, performing the functions and duties of the undersecretary of commerce for Intellectual Property and Director of the USPTO.
Decided: February 11, 2022
Circuit Judges O’Malley (author), Clevenger and Stoll.
Summary:
The CAFC affirmed a decision of the Patent Trial and Appeal board (PTAB) terminating Intuitive’ s participation in an inter partes review (IPR) based on the estoppel provision of 35 U.S.C. §315(e)(1).
35 U.S.C. §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.” 35 U.S.C. § 315(e)(1).
On June 14, 2018, Intuitive simultaneously filed three IPR petitions against a Patent owned by Ethicon (U.S. Patent No. 8,479,969), each challenging the patentability of claims 24 to 26 but each based upon a different combination of prior art references. Despite being filed at the same time, one of the three petitions was instituted one month after the other two. Continuing on this varied timeline, the PTAB issued final written decisions in the two petitions that instituted earliest. As a result, the PTAB found that Intuitive was estopped from participating as a party in the pending third petition. The PTAB concluded that §315(e)(1) did not preclude estoppel from applying where simultaneous petitions were filed by the same petitioner on the same claim.
Intuitive appealed. Intuitive argued that the 14000-word page limit for IPR petitions meant they could not reasonable have raised the prior art from the third and pending petition in in the same petition as the others. Intuitive argued that §315(e)(1) estoppel should not apply to simultaneously filed petitions. Intuitive argues, moreover, that it may appeal the merits of the Board’s final written decision on the patentability of the claims because, “even if the Board’s estoppel decision is not erroneous, Intuitive was once “a party to an inter partes review” and is dissatisfied with the Board’s final decision within the meaning of § 319.” (Only a party to an IPR may appeal a Board’s final written decision. See 35 U.S.C. § 141(c) (“A party to an inter partes review . . . who is dissatisfied with the final written decision . . . may appeal.”). Section 319 of Title 35 repeats that limitation).
The CAFC disagreed arguing that the plain language of §315(e)(1) is clear. §315(e)(1) estops a petitioner as to invalidity grounds for an asserted claim that it failed to raise but “reasonably could have raised” in an earlier decided IPR, regardless of whether the petitions were simultaneously filed and regardless of the reasons for their separate filing. The CAFC reasoned that since Intuitive filed all three petitions, it follows that they actually knew of all the prior art cited and so could have reasonably raised its grounds in the third petition in either of the first two petitions. First, the CAFC concludes that the petitions could have been written “more concisely” in order to fit within two petitions. Second, the CAFC noted that Intuitive had alternative avenues, including (i) seeking to consolidate multiple proceedings challenging the same patent (see 35 U.S.C. § 315(d) (permitting the Director to consolidate separate IPRs challenging the same patent)); or (ii) filing multiple petitions where each petition focuses on a separate, manageable subset of the claims to be challenged—as opposed to subsets of grounds—as § 315(e)(1) estoppel applies on a claim-by-claim basis.
Take-away:
- To avoid estoppel under 315(e)(1), when it is not possible to draft IPR petitions concisely, consider multiple petitions each focused on a separate manageable subset of claims or seek consolidation.
