Different Filing Dates Accorded to Petitions Filed on the Same Day

One of the more annoying aspects of PTAB practice is the variability in the agency’s issuance of Filing Date Notices.  In some cases, the Notice — an agency paralegal function — can come within a week or two of filing a petition (as it should), while in others, weeks later.  Since a Patent Owner’s Preliminary Response is due three months from the date of the Notice, different dates across related petitions can create a problematic misalignment in schedules.

Last week, the Federal Circuit considered whether 315(e)(1) estoppel can terminate one of two petitions filed on the same day, where one is decided earlier than the other as a simple result of a difference in schedules. In Intuitive Surgical, Inc. v. Ethicon LLC, the Court explained (here):

[Intuitive filed three IPR petitions—“the Timm/Anderson IPR,” “the Prisco/Cooper IPR,” and “the Giordano/Wallace IPR”—challenging claims 24-26 of the ‘969 patent, each relying on different prior art references.  The Board issued final written decisions in the Timm/Anderson and Giordano/Wallace IPRs on January 13, 2020, upholding the patentability of claims 24-26.  At that time, the Prisco/Cooper IPR remained ongoing. On January 21, 2020, Ethicon filed a motion to terminate Intuitive as a party to the Prisco/Cooper IPR, arguing that Intuitive was estopped under 35 U.S.C. § 315(e)(1) by virtue of the January 13, 2020 decisions.  On February 6, 2020, the Board terminated Intuitive as a petitioner to the Prisco/Cooper IPR and upheld the patentability of claims 24-26.]

After reviewing the statutory text, . . . we hold that § 315(e)(1) estops a petitioner as to invalidity grounds for an asserted claim that it failed to raise but “reasonably could have raised” in an earlier decided IPR, regardless of whether the petitions were simultaneously filed and regardless of the reasons for their separate filing.

A few practical points. First, the Board no longer accepts “parallel petitions” such as these.  That is, where the three petitions attack the same claims in multiple filings.  Rather, the Board, now requests a ranking such that only one IPR may proceed. Thus, while upon first blush this decision may appear patent friendly, it is directed to an unlikely scenario going forward.

Second, panels and/or petitioners can seek the alignment of schedules to avoid this type of misalignment in FWD timing.

The most frustrating aspect of this case for the petitioners is that the difference in schedules was the simple result of an agency paralegal working on the same-day filings on different days.  This created separation between the filing that did not exist when filed.

To the extent this holding has much relevance going forward, it would be where parties have joined proceedings targeting some common claims that the party may have overlapping in their own proceeding (such as this one)