IPR Jeopardy: Estoppel Pitfalls For Multiple Concurrently Filed Petitions

In Intuitive Surgical, Inc. v. Ethicon LLC, the U.S. Court of Appeals for the Federal Circuit recently affirmed that estoppel under 35 U.S.C. § 315(e)(1) can apply as between concurrently filed inter partes review (IPR) proceedings which are not all decided at the same time.¹ The court also held that a party estopped from maintaining an IPR under § 315(e)(1) is no longer a party to that IPR and is barred from appealing a final written decision on the merits.² As discussed below, the court proposed strategies petitioners can consider to avoid the consequences of this decision. The case arose out of a set of three concurrently filed IPR petitions from Intuitive Surgical, each of which challenged the patentability of various claims of US Patent No. 8,479,969 held by Ethicon.  Claim 24 was common to all three petitions, and claims 25-26 were common to two of the petitions.