by Dennis Crouch
California Institute of Technology v. Broadcom Ltd. (Fed. Cir. 2022)
The Federal Circuit inadvertently created some confusion when it released its February 4 opinion in CalTech. The original opinion indicated that Section 315(e) estoppel applies to “all claims and grounds not in the IPR but which reasonably could have been included.” The problem with that statement was that the statute appears to directly limit estoppel to challenged patent claims. I recently wrote about the issue and suggested that the court issue a clarification. See, Dennis Crouch, Federal Circuit Needs to Clarify that CalTech Estoppel Applies Only to Claims Challenged via IPR, Patently-O (Feb. 16, 2022).
The original panel has now released a correction as follows:
Accordingly, we take this opportunity to overrule Shaw and clarify that estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all
claims andgrounds not stated in theIPRpetition but which reasonably could have beenincluded inthe petitionasserted. In a regime in which the Board must institute on allgrounds assertedchallenged claims and the petition defines the IPR litigation, this interpretation is the only plausible reading of “reasonably could have been raised” and “in the IPR” that gives any meaning to those words.
Errata opinion (Feb 22, 2022). The result here is that CalTech still expands the scope of estoppel beyond prior Federal Circuit precedent, but the estoppel is now limited to attempts to re-challenge the same patent claims.
Going forward there will be a next step in litigating the scope of 315(2) estoppel — will they estoppel will apply to claims that are patentably indistinct from those challenged? In addition, we can recognize that issue preclusion (collateral estoppel) may also begin to apply more rigorously in the cross-tribunal context.
I expect that this quick errata opinion saved at least $1 million in legal fees associated with folks arguing this issue in cases across the country.
I’d point out that those of us on the rational side of patent debates have been arguing for real estopple pretty much since 2014.
My guess is that the proof that innovation is waning in the USA and patent filings are falling has made the crims at the CAFC decide to apply the law for once in their judicial activist deluded lives.
Your writing on this point, and the practical point at the end, are all spot-on. It was an important errata.
Yeah, this is a bit confusing. But I think Dennis’s interpretation is right.
Just because you could challenge all claims does not extend the estoppel to all claims. But importantly it does extend the estoppel to all challenged claims not just the claims the PTAB examine. But we know they can’t do that anymore.
As a side note, the reason the CAFC probably had trouble with this is that they are so used to treating other independent claims and dependent claims under their abstract umbrella of ‘we don’t like it.” So rather than treating each claim as its own invention, the “judges” have been wiping out huge claim sets without even reading the other claims.
Thus, the “judges” confusion.
The “reasoning” makes it unnecessary to actually bother reading (and understanding) ANY claims.
The word (gee are you surprised that the narratives have dropped its use?) is “Gist.”
Thanks Night Writer,
But I still do not arrive at the place that you are at in agreeing with Prof. Crouch.
Take your post from end back to beginning.
“but we know they can’t do that anymore.”
Yes – the rewrite here MUST also “know” that. It must then serve as a floor that the petitioner is in absolute control of what is included in a petition.
That MUST include the choice of the petitioner what NOT to include.
And given that ALL claims in a petition necessarily rise and fall together, it makes NO sense to assert estoppel vis a vis separate claims within a petition.
So — as I pointed out — the language left intact in this rewrite (to wit: “ clarify that estoppel applies not just to claims and grounds asserted in the petition”) MUST then apply to claims OUTSIDE of the petition, and of which the petitioner knowingly made a choice over.
The essence of estoppel is the extension to items of choice at the power of the one making the choice. As “Petitioner is master,” AND “ALL claims in a petition MUST rise and fall together” asserting that estoppel ONLY applies to claims within a petition does not make logical sense. That would not be “estoppel,” of the extension type under consideration, but instead would be the law of the case in a direct manner.
I don’t agree anon. The reason is that one could file two petitions one for claims 1-20 and another for claims 21-40 as an example.
So, I think it only applies to claims that have been challenged in the petition.
“The reason is that one could file two petitions one for claims 1-20 and another for claims 21-40 as an example.”
Not any more.
Again – this is the natural conclusion from the points I have presented.
You want a different conclusion? Then address the points and see if you can get there. You cannot get to where you want to be given the portion as I have pointed out twice now.
(this ‘change’ is exactly why the topic has garnered coverage — if your view would be to hold, this would be a yawner and would not even be making a splash).
Ah. I thought you could file a separate IPR for different claims of the same patent.
If you can’t do that, then I agree with you.
I still think looking at this again that there is an ambiguity.
It says “all challenged claims.”
So maybe estoppel doesn’t apply to unchallenged claims.
Probably need a case to decide this issue.
I hear you – and do note that the amended text does in fact read as you suggest.
My point though is that the non-amended text reads as I point out — and it is with that reading that the ‘take’ that only challenged claims are estopped is NOT LOGICAL.
(of course, that the CAFC is itself not logical is something that also need be considered)
I am not sure that the edits effect the changes that you indicate.
Unedited portions still implicate all claims, as any and all claims could have been made grounds to which a petition could have been written to cover.
To wit: “ clarify that estoppel applies not just to claims and grounds asserted in the petition” is left intact.
Nice use of “cross tribunal.” You haven’t lost your lexicography skills.
Thanks!
“I expect that this quick errata opinion saved at least $1 million in legal fees associated with folks arguing this issue in cases across the country.”
I’d guess it was a whole lot more than $1 million.
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