Background
Intuitive Surgical challenged Ethicon’s patent on an endoscopic surgical stapling instrument by filing three inter partes review (IPR) petitions against the same patent on the same day. Each petition challenged overlapping claims using different combinations of prior art. The Patent Trial and Appeal Board (PTAB) instituted review of two petitions immediately and the third petition one month later, creating an offset timeline.
PTAB issued final written decisions in the two earlier-instituted IPRs. Ethicon then argued that those decisions triggered estoppel under 35 U.S.C. § 315(e)(1), which bars a petitioner — following a final IPR decision — from requesting or maintaining a PTAB proceeding on any ground the petitioner raised or reasonably could have raised in the earlier IPR. PTAB agreed and terminated the third IPR on estoppel grounds. Intuitive Surgical appealed, arguing that § 315(e)(1) estoppel should not apply when all petitions were filed simultaneously.
The Court’s Holding
The Federal Circuit affirmed the PTAB’s termination of the third IPR. The court held that the timing of the petitions — whether filed simultaneously or sequentially — is irrelevant to whether § 315(e)(1) estoppel applies. What matters is whether the petitioner raised, or reasonably could have raised, the challenged ground in the earlier-decided IPR. Because Intuitive could have raised the invalidity grounds from the third petition in the first two IPRs, estoppel barred it from pursuing those grounds once the first two proceedings concluded with final written decisions.
The court rejected Intuitive’s argument that simultaneous filing should create an exception. Allowing that exception, the court reasoned, would permit petitioners to use parallel IPR filings as a litigation tactic to circumvent the estoppel provisions Congress designed to bring finality to patent challenges. The statute’s language — “reasably could have raised” — focuses on what the petitioner knew or could have known at the time of filing, not on the procedural timing of when petitions are acted upon.
Key Takeaways
- Filing multiple IPR petitions against the same patent on the same day does not protect a petitioner from § 315(e)(1) estoppel once PTAB issues final written decisions in the first-instituted proceedings.
- Petitioners should carefully consolidate all grounds they may want to rely on into the fewest petitions possible, recognizing that grounds “reasonably could have raised” in an earlier IPR will be estopped.
- Patent owners facing multiple simultaneous IPRs can use this doctrine strategically — if PTAB decides some petitions first, the remaining ones may be terminated on estoppel grounds.
- The decision reinforces Congress’s intent that IPR proceedings should be a single, consolidated challenge, not a tool for rolling multiple bites at the invalidity apple.
Why It Matters
Multiple-petition IPR strategies became common in high-stakes patent disputes, particularly in the medical device and pharmaceutical industries where a single patent can be worth billions of dollars. Intuitive Surgical v. Ethicon significantly curtailed that strategy by confirming that simultaneous filing does not create a safe harbor from estoppel.
For patent challengers, the practical lesson is: choose your IPR grounds wisely the first time and petition comprehensively. For patent owners, the decision offers a potential defense against multi-front PTAB attacks — once PTAB issues a final decision in one proceeding, the estoppel clock starts ticking on related challenges. This structural feature of the IPR system, reinforced by this decision, helps balance the rights of patent challengers with the finality interests of patent owners.