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.