Motions to Amend in Inter Partes Review: Why did Ethicon Cut Against the Grain?

            Motions to amend (MTAs) are generally disfavored. The prevailing approach calls for patentees to file an MTA in Inter Partes Review (IPR) only in limited circumstances. In particular, most patentees are moving to narrow or clarify claim scope via an MTA only in cases where (i) there is no related application pending at the Office and (ii) the specter of lost past damages due to intervening rights outweighs the risk of an invalidity finding. At first glance, neither (i) nor (ii) appears to be true in the case of Intuitive Surgical, Inc. v. Ethicon, LLC, (IPRs2018-00933, 00934, and 00935), yet Ethicon elected to pursue an MTA in each of the IPRs and was successful in doing so.       

            The Ethicon IPRs are similar to the vast majority of IPRs – the subject patents are in concurrent litigation. Over 80% of patents in IPR are involved in concurrent litigation, and that percentage will likely be increasing in light of the Federal Circuit’s narrow approach to finding Article III standing. Decisions such as RPX Corp. v. Chanbond LLC, No. 2017-2346, Order on Motion at 6 (Fed Cir. Jan. 17, 2018)and JTEKT Corp. v. GKN Automotive LTD., No 2017-1828 (Fed. Cir. Aug. 3, 2018) will undoubtedly have a chilling effect on prospective petitioners considering IPR in the context of a freedom to operate or clearance initiative. So, if fewer IPR petitions will be filed absent the existence of litigation or the threat of litigation, and the risk of intervening rights will prevent most patentees involved in concurrent litigation from filing MTAs, then logic tells us that MTA filings at the PTAB will be decreasing. 

            Ethicon’s use of MTAs in IPR cuts against that grain. In addition to being the subject of the three IPRs, the Ethicon patents are being asserted in the U.S. District Court, District of Delaware (1:17-cv-00871-LPS). In its amended complaint, Ethicon alleges that Intuitive Surgical has been offering for sale infringing products since 2013. Thus, apparently, Ethicon was aware that its MTAs, if successful, would trigger intervening rights for Intuitive Surgical such that any past damages would be lost for infringing uses/sales occurring since 2013 through the point in time when the IPR certificates are entered formally amending the scope of the asserted Ethicon claims.     

            Moreover, Ethicon has over five applications from the same patent portfolio as the patents in IPR pending at the Office.   That portfolio, of course, provided Ethicon an alternative or complimentary mechanism for pursuing the amended claim scope presented in its MTAs. In contrast to restrictive MTA procedure, the pending applications enjoy the benefit of examination including, among other things, examiner interviews and RCEs.                  

            The Ethicon IPRs were instituted prior to March 15,2019. Consequently, the MTA pilot program was unavailable and Ethicon did not enjoy the benefit of receiving provisional guidance from the PTAB or the option to file a revised MTA in light of the provisional guidance or Intuitive Surgical’s opposition. Nevertheless, Ethicon successfully addressed a 112(b) issue raised in district court and overcame the applied art by narrowing the scope of the subject claims to require a “motor coupled to a power source when said housing is not coupled to the surgical instrument system.” 

            So, why did Ethicon cut against the grain and file the MTAs? Upon further inspection, it may have been the existence of the 112(b) invalidity issue raised in Judge Stark’s December 28, 2018 Markman decision. The Ethicon IPRs were instituted after the Markman Decision affording Ethicon an opportunity to resolve the 112(b) issue in its MTAs while simultaneously addressing the prior art issues raised in IPR. A surviving amended patent which will likely be subject to intervening rights is clearly more valuable than an invalid patent.