”Parallel” inter partes review (IPR) petitions are viewed unfavorably by the Patent Trial and Appeal Board (PTAB). The PTAB’s Trial and Practice Guide notes that “[t]wo or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Accordingly, the PTAB requires a petitioner who files parallel petitions to provide a statement explaining the need for them to avoid denial of a petition of discretionary grounds. Now, the Federal Circuit has sanctioned another pitfall to a parallel petition that redundantly challenges the same claim as another petition—possible estoppel should the IPRs proceed on different schedules.

The estoppel provision of 35 U.S.C. § 315(e)(1) states that a petitioner “may not request or maintain a proceeding before the Office with respect to [a claim subject to a final written decision in an inter partes review] on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”

Intuitive Surgical filed multiple IPR petitions on the same day against the same patent. A first IPR relied on references to Giordano and Wallace (the “Giordano/Wallace IPR”), a second IPR relied on references to Timm and Anderson (the “Timm/Anderson IPR”), and a third IPR relied on references to Prisco and Cooper (the “Prisco/Cooper IPR”). And all claims challenged in the Prisco/Cooper IPR were challenged in the other two IPRs.

Unfortunately for Intuitive Surgical, the Patent Trial and Appeal Board (“PTAB”) worked at a different pace for each IPR, setting a later schedule for the Prisco/Cooper IPR and resulting in the issuance of final written decisions for the Giordano/Wallace and Timm/Anderson IPRs before the Prisco/Cooper IPR was decided. At the request of the patent owner once the other IPRs were decided, the PTAB terminated Intuitive from the Prisco/Cooper IPR based on 35 U.S.C. § 315(e)(1) and still decided the IPR on the merits, ruling for the patent owner.

Intuitive appealed, and the Federal Circuit affirmed the finding of estoppel and did not review the ruling of the Prisco/Cooper IPR on the merits (another decision from the Federal Circuit issued on the same day affirmed Intuitive losses in the Giordano/Wallace and Timm/Anderson IPRs). The Federal Circuit noted that it could not ignore the statutory language of estoppel “simply because the petitions were filed on the same day and were instituted within days of each other.” And rather than place blame on the PTAB, the Federal Circuit found fault with Intuitive for failing “to take advantage” of “statutory routes to avoid estoppel,” pointing out that Intuitive “did not seek to consolidate the three proceedings,” “did not divide its petitions according to subsets of claims,” and “did not ask that the cases proceed to final written decision on the same timetable.” 

The Federal Circuit felt that its approach was in furtherance of the legislative purposes of § 315(e)(1) to discourage “abusive serial challenges to patents” and provide “faster, less costly alternatives to civil litigation to challenge patents,” noting that Intuitive twice failed to invalidate the patent in the Giordano/Wallace and Timm/Anderson IPRs and “is not entitled to another bite at the apple via the Prisco/Cooper IPR.”