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Federal Circuit raises the stakes of IPR estoppel
When the PTAB issues a final written decision in an IPR, estoppel attaches to the petitioner and its privies under 35 U.S.C. §315(e). The Federal Circuit has recently issued a pair of decisions that clarifiy and broadly define the scope of such estoppel.
On Feb. 4, 2022, in Caltech v. Broadcom, the Federal Circuit Court of Appeals held that estoppel applies to any ground that the petitioner "raised or reasonably could have raised" in the IPR. See California Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 989 (Fed. Cir. 2022). The decision resolved a split among district courts as to whether estoppel under §315(e)(2) was limited to art and arguments that were raised in the IPR, or extended to any publication-based prior-art that could have been raised.
A week later, in Intuitive Surgical v. Ethicon, the Federal Circuit ruled that §315(e) estoppel opeerates to bar a petitionner from continuing a second IPR, even when that second IPR targeting the same patent claim, even when that second IPR was filed on the same day as the first. See Intuitive Surgical, Inc. v. Ethicon LLC., 25 F.4th 1035, 1041, 1042 (Fed.Cir.2022). Though the three petitions were filed on the same day, the final written decision of one the '248 petition lagged the others by three weeks. Id. at 1039. On Ethicon's motion, the Board terminated Intuitive as petitioner under §315(e)(1), and the Federal Circuit held that as a result of the estoppel, Intuitive could not raise, and the Court lacked jurisdiction to hear an appeal of the third petition. Id. at 1044.
The facts of the Intuitive case are informative, and have implications for litigants facing the need to bring multiple petitions. Facing a patent (U.S. Pat. 8,479,969) with lenghty claims having partially overlapping liitations, Intuitive filed three petitions on the same day. Importantly, all three petitions targetted claim 24.
On Feb. 4, 2022, in Caltech v. Broadcom, the Federal Circuit Court of Appeals held that estoppel applies to any ground that the petitioner "raised or reasonably could have raised" in the IPR. See California Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 989 (Fed. Cir. 2022). The decision resolved a split among district courts as to whether estoppel under §315(e)(2) was limited to art and arguments that were raised in the IPR, or extended to any publication-based prior-art that could have been raised.
A week later, in Intuitive Surgical v. Ethicon, the Federal Circuit ruled that §315(e) estoppel opeerates to bar a petitionner from continuing a second IPR, even when that second IPR targeting the same patent claim, even when that second IPR was filed on the same day as the first. See Intuitive Surgical, Inc. v. Ethicon LLC., 25 F.4th 1035, 1041, 1042 (Fed.Cir.2022). Though the three petitions were filed on the same day, the final written decision of one the '248 petition lagged the others by three weeks. Id. at 1039. On Ethicon's motion, the Board terminated Intuitive as petitioner under §315(e)(1), and the Federal Circuit held that as a result of the estoppel, Intuitive could not raise, and the Court lacked jurisdiction to hear an appeal of the third petition. Id. at 1044.
The facts of the Intuitive case are informative, and have implications for litigants facing the need to bring multiple petitions. Facing a patent (U.S. Pat. 8,479,969) with lenghty claims having partially overlapping liitations, Intuitive filed three petitions on the same day. Importantly, all three petitions targetted claim 24.
- IPR2018-01247 targeting claims 19-22 and 24-26
- IPR2018-10248 targeting claims 24-26; and
- IPR2018-01254 - targeting claims 1-11 and 24
Inspection of the claims shows that claim 24 shares some features with claim 1, and others with claim 19 both of which were found unpatentable in their respective IPRs. Dependent claims 11 also had some similarity to limitations in claim 24. Thus, it is understandable that the grounds used to target the main claim sets in the '247 and '254 petitions presented different relative strengths and weaknesses as to challenged claim 24. On appeal, Intuitive argued thast due to the 14,000-word-limit imposed on IPR petitioons, and the fact that it could not add more grounds after institution, it had no choice but to proceed with its parallel petitions. Id. at 1040-41.
The Court expressed the skepticism, suggesting that the petitions could have been written more consisely, so as to fit all of the grrounds in two petitions. Id. at 1041. Alternatively, the Court noted that Intuitive could either have asked to PTAB to consolidate the petitions, or could have filed its petitions to avoid overlap in the claims, as estoppel applies under §315(e)( applies on on a claim-by-claim basis. Id.
Patent defendants frequently face significant pressure to prepare and file IPRs as quickly as possible--often with the risk that the best arguments may not have been developed. In light of these recent decisions, by two different panels of the Federal Circuit, it is more important than ever to think strategically about IPR filings. Patent defendants must ensure that their team identifies and weighs the printed prior-art as early as possible, as estoppel may prevent the use of later-identified art that could have been identified earlier, from being used at trial. In addition, Patent challengers who must raise multiple petitions should avoid challenging the same claims in multiple petitions.