INTUITIVE SURGICAL, INC. v. ETHICON LLC

Intuitive appeals from a final written decision of the Board upholding the patentability of claims 24–26 of U.S. Patent No. 8,479,969 relating to a robotically controlled endoscopic surgical instrument. The CAFC holds that the Board did not err in dismissing Intuitive’s appeal, finding Intuitive was estopped from maintaining this inter partes review (“IPR”) proceeding and terminating Intuitive as a party under 35 U.S.C. § 315(e)(1). Only a party to an IPR may appeal a Board’s final written decision. However, Intuitive argues that § 315(e)(1) estoppel should not apply to simultaneously filed petitions, and that Intuitive was once “a party to an inter partes review” and is dissatisfied with the Board’s final decision within the meaning of § 319.  The CAFC was unpersuaded by Intuitive’s argument that it could not “reasonably have raised” its grounds from three simultaneously filed petitions because 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. The CAFC rejects the proposition because Intuitive was “the master of its own petition” and could have made its challenges more pointed and specific so as to fit all of its grounds in two petitions satisfying the word limits, and Intuitive failed to take advantage the available statutory routes to avoid estoppel, e.g., seek to consolidate the three proceedings; divide its petitions according to subsets of claims; or ask that the cases proceed to final written decision on the same timetable. The CAFC concludes that 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, and 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. Accordingly, Intuitive’s appeal was dismissed.

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