INTUITIVE SURGICAL, INC., Appellant v. ETHICON LLC, Appellee ANDREW HIRSHFELD, PERFORMING THE FUNCTIONS AND DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor
2020-1481
United States Court of Appeals for the Federal Circuit
Decided: February 11, 2022
United States Court of Appeals for the Federal Circuit ______________________ INTUITIVE SURGICAL, INC., Appellant v. ETHICON LLC, Appellee ANDREW HIRSHFELD, PERFORMING THE FUNCTIONS AND DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor ______________________ 2020-1481 ______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2018-01248. ______________________ Decided: February 11, 2022 ______________________ STEVEN KATZ, Fish & Richardson P.C., Boston, MA, argued for appellant. Also represented by RYAN PATRICK O‘CONNOR,
SARAH E. CRAVEN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED, MOLLY R. SILFEN. ______________________
Before O’MALLEY, CLEVENGER, and STOLL, Circuit Judges.
O’MALLEY, Circuit Judge.
Intuitive Surgical, Inc. (“Intuitive”) appeals from a final written decision of the Patent Trial and Appeal Board (“Board”) upholding the patentability of claims 24–26 of U.S. Patent No. 8,479,969. See Intuitive Surgical, Inc. v. Ethicon LLC, No. IPR2018-01248, 2020 WL 594140 (P.T.A.B. Feb. 6, 2020).
The threshold question is whether Intuitive is authorized by statute to pursue this appeal. That question turns on whether the Board erred in finding Intuitive estopped from maintaining this inter partes review (“IPR”) proceeding and terminating Intuitive as a party under
I. BACKGROUND
The ’969 patent is entitled “Drive Interface for Operably Coupling a Manipulatable Surgical Tool to a Robot.” It relates to a robotically controlled endoscopic surgical instrument, which is a commonly used tool in minimally invasive surgery procedures.
On June 14, 2018, Intuitive filed three petitions—IPR2018-01247 (“the Timm/Anderson IPR”), IPR2018-01248 (“the Prisco/Cooper IPR”), and IPR2018-01254 (“the Giordano/Wallace IPR”)—to challenge the patentability of certain claims of the ’969 patent. All three IPRs challenged the patentability of claim 24 but relied on different prior art references in doing so. The Board instituted the Timm/Anderson and Giordano/Wallace IPRs in January 2019, then instituted the Prisco/Cooper IPR the following month.
In the Timm/Anderson IPR, Intuitive argued that claim 24 would have been obvious over U.S. Patent No. 6,783,524 (“Anderson”) in view of U.S. Patent No. 7,510,107 (“Timm”).1 Intuitive also argued that claims 25 and 26 would have been obvious over Anderson and Timm, in further view of U.S. Patent No. 6,699,235 (“Wallace”).2 In the Giordano/Wallace IPR, Intuitive argued that claim 24 would have been obvious over U.S. Patent Application Publication No. 2008/0167672 (“Giordano”) in view of Wallace.3 On January 13, 2020,
written decisions in both the Timm/Anderson and Giordano/Wallace IPRs, upholding the patentability of claim 24 in the face of the prior art cited there.4 The Timm/Anderson IPR also upheld the patentability of claims 25 and 26.
In the Prisco/Cooper IPR, Intuitive argued that claims 24–26 are anticipated by U.S. Patent No. 8,545,515 (“Prisco”).5 The Prisco/Cooper IPR remained ongoing as of the January 13, 2020, final written decisions in the Timm/Anderson and Giordano/Wallace IPRs. On January 21, 2020, Ethicon filed a motion to terminate Intuitive as a party to the Prisco/Cooper IPR, arguing that Intuitive was estopped from proceeding with that IPR under
articulation control, which allow the surgical tool to bend relative to the shaft.
Intuitive timely appeals to this court.
II. DISCUSSION
Only a party to an IPR may appeal a Board’s final written decision. See
A.
Neither the parties nor the U.S. Patent and Trademark Office (“PTO”) dispute our jurisdiction to review the Board’s estoppel decision.
the litigation between the parties . . . and leaves nothing to be done but to enforce by execution what has been determined.” St. Louis, I.M. & S. Ry. Co. v. S. Express Co., 108 U.S. 24, 28–29 (1883). In the proceedings here, § 1295(a)(4)(A) permits us to review the Board’s estoppel decision because the Board’s decision to terminate Intuitive as a party to the Prisco/Cooper IPR is a “decision” of the Board “with respect to” an IPR that is also “final” in terminating the proceeding with respect to Intuitive.
Though we may not review Board decisions reconsidering and terminating an institution decision, we are not precluded by the
B.
We now consider the merits of Intuitive’s challenge to the Board’s § 315(e)(1) determination to terminate Intuitive as a party to the Prisco/Cooper IPR. Subsection 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.”
Specifically, Intuitive alleges that the Board erred because Intuitive could not “reasonably have raised” its grounds from the Prisco/Cooper IPR in the simultaneously filed Timm/Anderson and Giordano/Wallace petitions. It argues that the 14,000-word limit imposed on petitions necessitated three separate petitions to present all the prior-art combinations on which it wished to rely.6 Intuitive adds that it could not have later raised its grounds from the Prisco/Cooper IPR because new grounds cannot be added after institution.
We are unpersuaded. The Board did not err in finding Intuitive estopped from maintaining the Prisco/Cooper
IPR. After reviewing the statutory text, “considered alongside its context, purpose, and history,” see Gundy v. United States, 139 S. Ct. 2116, 2123, reh’g denied, 140 S. Ct. 579 (2019), we hold that § 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 plain language of § 315(e)(1) is clear that estoppel is triggered when an IPR proceeding results in a final written decision, compelling the conclusion that Intuitive was estopped as to the Prisco/Cooper IPR once the Giordano/Wallace and Timm/Anderson IPRs concluded with final written decisions. We cannot ignore this statutory language simply because the petitions were filed on the same day and were instituted within days of each other.
It is undisputed that all three IPRs challenged the same claim of the ’969 patent. It is also undisputed that Intuitive filed all three petitions on the same day. It follows, therefore, that Intuitive actually knew of the Prisco prior art at the time it filed the other two petitions and knew which claims it wanted to challenge based on that art. Certainly, Intuitive reasonably could have raised its grounds from the Prisco/Cooper IPR in either the Giordano/Wallace or Timm/Anderson IPRs. Yet, it did not.
Intuitive concedes, as it must, that it knew of the precise grounds it wanted to assert in the last of the three IPRs to be instituted when it filed and pursued its first two petitions all the way to final written decisions. It asserts, however, that it should be relieved of the estoppel it would otherwise face under § 315(e)(1) because it could not “reasonably” have asserted the claims in the Prisco/Cooper IPR any sooner. This is so, according to Intuitive, for two reasons: (1) the Board’s 14,000 word limit on petitions made it impossible to raise all grounds in the first two IPRs and
(2) because the Board prohibits amending petitions after institution, it could not have asserted the Prisco/Cooper grounds “during” the IPR within the meaning of § 315(e)(1), as defined by our decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016). We are unpersuaded.
We reject the proposition that the three petitions could not have been more concisely written to fit in only two petitions. First, as the master of its own petition, Intuitive could have made its challenges more pointed and specific so as to fit all of its grounds in two petitions satisfying the word limits. Second, Intuitive had alternative avenues that would have allowed it to file three full-length petitions while avoiding the consequences of § 315(e)(1), despite the word limit. A petitioner may seek to consolidate multiple proceedings challenging the same patent—whether filed on the same day or not—if the Board institutes review on multiple petitions by a single petitioner. See
own making.7 With these choices left unpursued, we cannot conclude that Intuitive could not “reasonably have raised” its grounds from the Prisco/Cooper IPR in the other proceedings.
Intuitive’s reliance on Shaw is similarly unpersuasive. As an initial matter, we find Intuitive’s one-sentence citation to Shaw inadequate to preserve meaningful reliance on that decision. Even if the argument were not forfeited, moreover, it is easily rejected on the merits. To be sure, Shaw stood for the proposition that estoppel does not bar challenges to grounds asserted in a petition but on which the Board refused institution. Shaw did not, however, directly speak to the impact of estoppel on grounds never raised in petitions. Several district courts attempted to determine Shaw’s impact on such grounds and split on the question. Compare Cobalt Boats, LLC v. Sea Ray Boats, Inc., No. 2:15-cv-21, 2017 WL 2605977, at *2–3 (E.D. Va. June 5, 2017) (determining that estoppel applies to grounds not included in a petition that the petitioner reasonably could have raised), and SiOnyx, LLC v. Hamamatsu Photonics K.K., 330 F. Supp. 3d 574, 602 (D. Mass. 2018) (explaining that “reasonably could have raised” includes “any patent or printed publication that a petitioner actually knew about or that ‘a skilled searcher conducting a diligent search reasonably could have been expected to discover’”), with Koninklijke Philips N.V. v. Wangs All. Corp., No. 14:cv-12298, 2018 WL 283893, at *4 (D. Mass. Jan. 2, 2018) (“It would seem, then, that the phrase ‘inter partes review’ . . . refers only to the period of time after review is instituted.”), and Lighting Sci. Grp. Corp. v. Shenzhen Jiawei Photovoltaic Lighting Co., No. 16-cv-3886-BLF, 2017 WL 2633131, at *5 (N.D. Cal. June 19, 2017)
(determining that Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. 12-cv-05501- SI, 2017 WL 235048 (N.D. Cal. Jan 19, 2017) interprets § 315(e) to apply only to grounds raised in the IPR petition and instituted by the Board).
Recognizing this split among the lower courts, and the need for clarity on the question, we recently took the opportunity to make clear that, to the extent Shaw held that estoppel can only apply to instituted grounds for a given claim because those grounds were the only ones raised “during” the IPR, and not to grounds for that same claim that a petitioner could have “reasonably raised” but did not, that aspect of Shaw has been abrogated by subsequent Supreme Court case law. Cal. Inst. of Tech. v. Broadcom Ltd., No. 2020-2222, 2021-1527, 2022 WL 333669, at *9–11 (Fed. Cir. Feb. 4, 2022) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018)) (overruling
Contrary to Intuitive’s arguments, moreover, applying estoppel in these circumstances is not only consistent with SAS, but it also furthers the legislative purposes of § 315(e)(1). Subsection 315(e)(1) has been understood to discourage “abusive serial challenges to patents” and provide “faster, less costly alternatives to civil litigation to challenge patents.” 157 Cong. Rec. S936, S952 (daily ed. Feb. 28, 2011) (statement of Sen. Grassley). Here, Intuitive has already twice failed to invalidate claim 24 of the ’969 patent in the Giordano/Wallace and Timm/Anderson IPRs and is not entitled to another bite at the apple via the Prisco/Cooper IPR.
C.
Intuitive finally asserts that, even if the Board was correct to conclude that Intuitive was estopped from pursuing
the Prisco/Cooper IPR, Intuitive still has the right to appeal the Board’s merits determination because it was once a party to that IPR. That contention reflects a misunderstanding of both § 315(e)(1) and § 319.
Subsection 315(e)(1) expressly states that, once the Board issues a final written decision addressing the patentability of the claims of a patent, “[t]he petitioner . . . may not request or maintain a proceeding” challenging those same claims before the Board on grounds that it “raised or reasonably could have raised during that inter partes review.” That means that, regardless of when the Board memorializes its conclusion that § 315(e)(1) bars a proceeding, the estoppel is effective as of the issuance of the prior written decision. To read § 315(e)(1) otherwise would eviscerate the “maintain a proceeding” language in the statute.
The question here is whether Intuitive—which was no longer a party to the Prisco/Cooper IPR once the Board issued the Giordano/Wallace and Timm/Anderson final written decisions—has satisfied the statutory requirements attendant to the right to appeal from the Prisco/Cooper merits determination. Sections 141(c) and 319 of Title 35 set forth who is statutorily authorized to appeal a final written decision of the Board. As noted above, § 141(c) states that only a “party to an inter partes review” has the right to appeal a final written decision of the Board. Similarly, § 319 states that only a “party dissatisfied with the final written decision” of the Board may appeal. Thus, only parties to an IPR fall within the zone of interests protected by the law invoked—i.e., the right to appeal a final written decision of the Board. Mylan Pharms. Inc. v. Rsch. Corp. Techs., Inc., 914 F.3d 1366, 1373 (Fed. Cir. 2019) (statutory right to appeal limited to those Congress authorized to take an appeal). Once § 315(e)(1) prohibited Intuitive from maintaining this IPR, Intuitive ceased to be a party under § 141 and § 319, placing it outside the zone of interest established by the congressionally authorized right to appeal
in those provisions. Id. (citing Lexmark Int’l, Inc. v. Static Control Comps., Inc., 572 U.S. 118, 129 (2014)).8
We have considered Intuitive’s remaining arguments and find them unpersuasive. For the reasons discussed above, we affirm the Board’s conclusion that Intuitive was estopped from maintaining the Prisco/Cooper IPR once the final written decisions in the Timm/Anderson and Giordano/Wallace IPRs issued. Because Intuitive may not challenge the Board’s final written decision in the IPR at issue here as a non-party, we have no jurisdiction to review the merits of the Board’s decision. Accordingly, we dismiss Intuitive’s appeal.
DISMISSED