February 6, 2023

Volume XIII, Number 37

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February 03, 2023

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Petitioner Estopped Due to Final Written Decisions in Parallel IPR Proceedings with Petitions Filed Simultaneously

In Intuitive Surgical, Inc. v. Ethicon LLC, No. 2020-1481 (Fed. Cir. Feb. 11, 2022), the Federal Circuit affirmed that Intuitive was estopped under § 315(e)(1) from maintaining an IPR and dismissed the appeal.

Intuitive simultaneously filed three IPRs challenging the patentability of Ethicon’s patent, each relying on different prior art references, yet each attacking the same claims. The Board issued final written decisions in two of the IPRs. Later, in the third, the Board removed Intuitive as a petitioner because § 315(e)(1) estopped Intuitive after issuance of the two final written decisions.

Intuitive argued § 315(e)(1) estoppel should not apply to simultaneously filed petitions. The Court rejected Intuitive’s argument that it could not “reasonably have raised” all its grounds in two IPR petitions because of word limits. The Federal Circuit also noted that Intuitive had alternative avenues that would have allowed it to file three full-length petitions while avoiding the consequences of § 315(e)(1). It could have sought consolidation or focused each petition on a separate set of claims.

Intuitive also argued it may appeal the Board’s decision because it was once a party to an IPR. The Federal Circuit concluded that once § 315(e)(1) estopped Intuitive, it ceased to be a party, and lost any right to appeal.

© 2023 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XII, Number 46

About this Author


Troy Viger is an associate attorney in Finnegan’s Atlanta, GA office.

+1 404 653 6475
Joshua L. Goldberg attorney intellectual property Finnegan Washington DC

Joshua Goldberg, leader of Finnegan’s PTAB trials section, focuses on inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and on ensuing appeals to the U.S. Court of Appeals for the Federal Circuit.

As lead or backup counsel in more than 225 IPRs, CBMs, and PGRs, Joshua represents petitioners and patent owners in proceedings involving patents directed to industrial manufacturing, automotive, chemical,...