Best Practices for Filing Multiple Petitions After Intuitive Surgical, Inc. v. Ethicon LLC
By Douglas Lewis, Douglas Lewis Law LLC
A recent Federal Circuit decision has changed the best practices for filing an Inter Partes Review (IPR) where the grounds require more than the 14,000 word limit per petition to explain. Previously, common practice was to divide grounds into multiple petitions by prior art references or combinations, even if multiple petitions involved overlapping claims, to avoid repeating summaries of the art or reasons to combine. In Intuitive Surgical, Inc. v. Ethicon LLC, Court of Appeals, Federal Circuit 2022 (February 11, 2022), however, the Federal Circuit held that Intuitive was estopped from asserting unpatentability in one of its three petitions filed on the same day because the Final Written Decision in other two had already issued. Accordingly, any petitioner who puts the same claim in multiple petitions risks estoppel because petitioner has no control over the Board’s delayed Final Written Decision on Intuitive’s third petition.
After Intuitive therefore, petitioners should include all grounds for a claim’s unpatentability in a single petition whenever possible. If all grounds for a single claim require more than 14,000 words and thus more than one petition, petitioner should move for consolidation as soon as possible, but especially if the Patent Office issues a notice of filing date for petitions containing overlapping claims on different dates.
The Intuitive Decision and Its Genesis
Intuitive filed three IPR petitions (ultimately docketed as IPR2018-01247, IPR2018-01254, and IPR2018-01248) on the same day, June 14, 2018, challenging the patentability of the same group of claims in U.S. Patent No. 8,479,969, based on different prior art combinations. Intuitive at 3. Intuitive explained “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.” Id. at 7. The Final Written Decisions on two petitions issued on January 13, 2020 with IPR2018-01248 still pending on that date because its Final Written Decision was not due until February 7, 2020. Intuitive at 3-4. On motion, the Board then dismissed Intuitive from IPR2018-01248 as estopped under 35 U.S.C. § 315(e)(1) because the claims at issue were already the subject of a Final Written Decision—i.e., the other two cases. Id. at 4. The Federal Circuit affirmed the Board’s estoppel finding under 35 U.S.C. § 315(e)(1) and its resulting dismissal of Intuitive from IPR2018-01248. Once the Final Written Decision in the other two petitions issued, the claims in IPR2018-01248 were the subject of a prior Final Written Decision, and thus Intuitive “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.” 35 U.S.C. § 315(e)(1); Intuitive at 7-11. The Federal Circuit considered it irrelevant that Intuitive had filed all three petitions on the same day. Intuitive at 7.
Although the Federal Circuit’s opinion does not explain how the Final Written Decision for IPR2018-01248 got out of sync with the other two cases, the docket for the three cases shows that the Patent Office’s ministerial act of sending out the notice of filing date caused the delay. For each of IPR2018-01247 and IPR2018-01254, the Board issued the “Notice Of Filing Date Accorded To Petition And Time For Filing Patent Owner Preliminary Response” on July 17, 2018, setting the Patent Owner’s Preliminary Response deadline three months after the Notice’s date. For no reason discernible in the record, the Board issued the corresponding notice in IPR2018-01248 on August 9, 2018, about three weeks later, giving that case the same filing date as the other two cases. But importantly, the IPR2018-01248 notice set the Patent Owner’s Preliminary Response deadline for three months after the notice and thus about three weeks after the Preliminary Response in the other two cases.
Many IPR timeline summaries, including the Patent Office’s (see https://www.uspto.gov/patents/ptab/trials/aia-trial-types), show the Patent Owner’s Preliminary Response due three months after the filing date, although the statute does not require that and instead allows the Patent Owner to file “within a time period set by the Director.” 35 U.S.C. § 313. The Director set this deadline via regulation with 37 CFR § 42.107(b) requiring that “[t]he preliminary response must be filed no later than three months after the date of a notice indicating that the request to institute an inter partes review has been granted a filing date.” The deadline for the Patent Owner’s Preliminary Response therefore does not depend on the filing date but is instead based on whenever the Patent Office issues the notice of filing date. Accordingly, petitions with the same filing date are not assured the same Preliminary Response deadline.
And this variance is important because the Preliminary Response deadline drives the rest of the schedule, including the Final Written Decision. The statute sets the remainder of the IPR timeline directly or indirectly based on the due date of the Preliminary Response, with the Institution Decision due “within 3 months after—(1) receiving a preliminary response to the petition under section 313 or (2) if no such preliminary response is filed, the last date on which such response may be filed.” 35 U.S.C. § 314(b). The Final Written Decision is then due within one year of the institution decision. 35 U.S.C. §316(a)(11). Accordingly, despite being filed on the same day, the statute did not require the Board in Intuitive to issue the IPR2018-01248’s Final Written Decision on the same day as the other two petitions—because the IPR2018-01248’s institution decision issued about three weeks later than the institution decisions in the other two proceedings, which was ultimately caused by the Patent Office’s later issuance of the notice of filing date.
The current, common practice of including the same claim in multiple petitions is now risky because this interplay between these regulations, the statute, and Patent Office’s handling of the notice of filing date leaves a petitioner with no guarantee that two petitions filed on the same day will have their Final Written Decisions due on the same day, with the corresponding risk of estoppel if they do not. Furthermore, the statute requires a Final Written Decision within a year of institution, allowing the Board to issue that decision earlier, thereby creating an estoppel risk if a Final Written Decision on one petition issues before a decision on another petition involving overlapping claims (even if only by a single day).
Because Final Written Decisions on petitions filed on the same day may not issue on the same day, petitioners who put the same claim in multiple petitions risk estoppel. Although practitioners may have assumed that the statute precluded only filing new IPRs after losing, the Federal Circuit in Intuitive applied the statute’s literal language and found that any petitioner whose petition contained claims that had already been the subject of a final written decision was estopped, including co-pending petitions filed the same day.
Best Practices After Intuitive
In response to Intuitive’s equitable arguments, the Federal Circuit offered some solutions to avoiding estoppel, some wrong, some still risky, and some useful. The Federal Circuit offered Intuitive the following advice:
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 35 U.S.C. § 315(d) (permitting the Director to consolidate separate IPRs challenging the same patent). A petitioner may also file multiple petitions where each petition focuses on a separate, manageable subset of the claims to be challenged—as opposed to subsets of grounds—as § 315(e)(1) estoppel applies on a claim-by-claim basis. See 35 U.S.C. § 315(e)(1).
Intuitive at 9.
As to the first piece of advice, being concise and filing two, rather than three petitions, the Court’s own holding prevents any guarantee that two petitions will receive the same deadline for their Final Written Decisions, leaving the latter-instituted subject to estoppel. Even with two petitions, the Patent Office could still issue the notice of filing date for one petition before the other, reproducing the problem that Intuitive faced. And while being concise and limiting the number of grounds is good advice, doing so may not solve the estoppel problem in all cases because reducing the number of petitions in which a claim appears only prevents estoppel if a petitioner can reduce that number to one.
The Federal Circuit next advises that Intuitive could have sought to consolidate its petitions under 35 U.S.C. §315(d). That section, of course, is permissive, not mandatory—“the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding”—so it does not provide petitioners surety against estoppel of one or more petitions. The regulation uses the same standard. 37 CFR § 42.122 (“Where another matter involving the patent is before the Office, the Board may during the pendency of the inter partes review enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.”). Although the best practice is to include all grounds for a given claim in a single petition, if, however, that is not possible, moving for consolidation—and prominently citing the above paragraph of Intuitive—is the next best alternative—with the caveat that consolidation is subject to the Board’s discretion.
Third and finally, the Federal Circuit advises that “[a] petitioner may also file multiple petitions where each petition focuses on a separate, manageable subset of the claims to be challenged—as opposed to subsets of grounds.” Intuitive at 9.While this advice reflects the ideal best practice when filing multiple petitions, it may not always be possible to fit all of a claim’s grounds in 14,000 words, especially for claims with many elements or with long dependency chains. Petitioners often have good reasons to advance multiple grounds for a single claim, including wanting to offer alternative prior art combinations or references or wanting to offer alternative grounds that may work better with one claim construction than another. Obviously, petitioners should try to reduce word count by critically evaluating the art and combinations and not including grounds with inferior combinations or references. But often one ground is not meaningfully inferior to another and most petitioners like to give the Board (or any decision maker) multiple options because it is hard to guess what will most appeal to the Board.
Considering the root cause of Intuitive’s estoppel and the Federal Circuit’s advice, the best practice for filing petitions where petitioner’s grounds for all claims will not fit within the 14,000 word limit is to place all grounds for a claim’s unpatentability in the one petition. In other words, after Intuitive, petitioners should divide petitions by claim, not by prior art reference or combination, even if doing so is inefficient and wastes words. At times, this will be challenging and may result in increased overhead and additional petitions. For example, using the same reference or combinations against different claims in multiple petitions requires introducing and explaining the prior art and reasons to combine multiple times in multiple petitions.
Although the unquestionable best practice is to include all of a claim’s grounds in a single petition, when that is not possible, petitioners should follow the Federal Circuit’s advice and move to consolidate petitions containing the overlapping claims as soon as possible. Attorneys should keep in mind, however, that consolidation is discretionary. Petitioners should absolutely and without fail move to consolidate petitions containing common claims and seek a common timetable if the Patent Office issues the notice of filing date for petitions on different days—and prominently cite the Federal Circuit’s advice to do this. See Intuitive at 9. But petitioner should nonetheless seriously consider moving to consolidate petitions with common claims even if the notices issue on the same day to prevent estoppel if the Board issues a Final Written Decision on one or more petitions early and then terminates any remaining petitions as estopped.