Intuitive Surgical v. Ethicon. In a Feb. 11, 2022 decision in Intuitive Surgical v. Ethicon, 2022 WL 414252, the CAFC indicated that multiple petitions challenging different claims is permissible since estoppel is on a claim by claim basis. The CAFC affirmed a PTAB decision holding that Section 315(e)(1) estoppel arising on a final written decision in two simultaneously filed IPRs required dismissal of a third simultaneously filed IPR which asserted different grounds against the same claims. The petitioner had argued that not all grounds could be asserted based on the word count limit. The court disagreed, noting that petitioner could have avoided the problem by filing multiple petitions addressing different subsets of the claims, as opposed to different subsets of the grounds. In so doing, the court indicated that IPR estoppel “applies on a claim-by-claim basis,” implying that the estoppel does not extend to non-petitioned claims.
Practice Tip: It is always best to file a single petition against a single patent. But if you find that you are unable to do so, and you are having trouble including all of your arguments in a single petition, consider presenting the arguments in multiple petitions—but be sure that you are challenging different claims in each petition.
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