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United States Court of Appeals for the Federal Circuit
February 11, 2022, Decided
O'Malley, Circuit Judge.
Intuitive Surgical, Inc. ("Intuitive") appeals from a final written decision of the Patent Trial and Appeal Board ("Board") upholding the patentability of claims 24-26 of U.S. Patent No. 8,479,969. See Intuitive Surgical, Inc. v. Ethicon LLC, No. IPR2018-01248, 2020 Pat. App. LEXIS 6548, 2020 WL 594140 (P.T.A.B. Feb. 6, 2020).
The threshold question is whether Intuitive is authorized by statute to pursue this appeal. That question turns on whether the Board erred in finding Intuitive estopped from maintaining this inter partes review ("IPR") proceeding and terminating Intuitive as a party under 35 U.S.C. § 315(e)(1). 2020 Pat. App. LEXIS 6548 at *4. We hold that the Board [*2] did not err and, thus, dismiss Intuitive's appeal. Accordingly, we do not reach the merits of the Board's final written decision upholding the patentability of claims 24-26 of the '969 patent.
The '969 patent is entitled "Drive Interface for Operably Coupling a Manipulatable Surgical Tool to a Robot." It relates to a robotically controlled endoscopic surgical instrument, which is a commonly used tool in minimally invasive surgery procedures.
On June 14, 2018, Intuitive filed three petitions—IPR2018-01247 ("the Timm/Anderson IPR"), IPR2018-01248 ("the Prisco/Cooper IPR"), and IPR2018-01254 ("the Giordano/Wallace IPR")—to challenge the patentability of certain claims of the '969 patent. All three IPRs challenged the patentability of claim 24 but relied on different prior art references in doing so. The Board instituted the Timm/Anderson and Giordano/Wallace IPRs in January 2019, then instituted the Prisco/Cooper IPR the following month.
In the Timm/Anderson IPR, Intuitive argued that claim 24 would have been obvious over U.S. Patent No. 6,783,524 ("Anderson") in view of U.S. Patent No. 7,510,107 ("Timm").1 Intuitive also argued that claims 25 and 26 would have been obvious over Anderson and Timm, in further view of U.S. Patent No. 6,699,235 ("Wallace").2 In the Giordano/Wallace IPR, [*3] Intuitive argued that claim 24 would have been obvious over U.S. Patent Application Publication No. 2008/0167672 ("Giordano") in view of Wallace.3 On January 13, 2020, the Board issued final written decisions in both the Timm/Anderson and Giordano/Wallace IPRs, upholding the patentability of claim 24 in the face of the prior art cited there.4 The Timm/Anderson IPR also upheld the patentability of claims 25 and 26.
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2022 U.S. App. LEXIS 3813 *; __ F.4th __; 2022 WL 414252
INTUITIVE SURGICAL, INC., Appellant v. ETHICON LLC, Appellee, ANDREW HIRSHFELD, PERFORMING THE FUNCTIONS AND DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor
Subsequent History: Related proceeding at Intuitive Surgical, Inc. v. Ethicon LLC, 2022 U.S. App. LEXIS 3810 (Fed. Cir., Feb. 11, 2022)
Prior History: [*1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2018-01248.
Intuitive Surgical, Inc. v. Ethicon LLC, 2020 Pat. App. LEXIS 6548 (P.T.A.B., Feb. 6, 2020)
written decision, patentability, petitions, grounds, estoppel, inter partes, terminating, instituted, estopped, merits, proceedings, challenges, argues, right to appeal
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