by Dennis Crouch
In Feb 2022, the Court of Appeals for the Federal Circuit released two separate opinions discussing the estoppel provisions of 35 U.S.C. § 315(e).
- California Inst. of Tech. v. Broadcom Ltd., — F.4th —, 2022 WL 333669 (Fed. Cir. Feb. 4, 2022)
- Intuitive Surgical, Inc. v. Ethicon LLC, — F.4th —, 2022 WL 414252 (Fed. Cir. Feb. 11, 2022)
Both decisions found that estoppel applied to bar certain post-IPR patent challenges. That said, the two opinions are also in a amount of tension with regard to what claim challenges are estopped. The decisions are important; Estoppel is a huge consideration of accused infringers as they consider how to structure their inter partes review (IPR) petition(s) and these are all multi-million-dollar cases.
Lets dig into the statute first, and then the decisions. The scope of estoppel was a major lobbying point during the passage of the America Invents Act of 2011 (AIA). Patentees raised concerns of harassment from multiple IPRs or IPRs followed by district court litigation. At the same time, Challengers were concerned that broad estoppel would leave them with no defense in court.
Under the 2011 statute, a patentee can challenge one or more claims of a patent via IPR. If an IPR is instituted, the IPR then typically ends with a final written decision determining whether to cancel the claims. Section 315(e) estoppel is triggered by that final written decision. Once the final written decision issues, the IPR petitioner (or RPI/Privy) cannot do either of the following:
- [R]equest or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. 315(e)(1).
- [A]ssert either in a civil action arising [under the Patent Act] or in a [Section 337] proceeding before the International Trade Commission . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review. 315(e)(2).
You can see that these two subsections of 315(e) are substantially parallel and with only minor differences. One commonality is that both tie estoppel to “the claim” or “that claim” — meaning the claim challenged by the petitioner.
In CalTech, Apple had filed several IPR petitions against CalTech’s patents. Those were eventually won by the patentee. Meanwhile, the infringement litigation was ongoing and Apple and Broadcom (the RPI) had raised several invalidity defenses. However, the district court barred those defenses because they “reasonably could have [been] raised” in the IPR petition. On appeal, the Federal Circuit affirmed that finding — particularly rejected the notion the “reasonably-could-have” expansion only applied to additional arguments that could have been raised post-institution.
[W]e take this opportunity to … 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 and grounds not in the IPR but which reasonably could have been included in the petition.
CalTech. As you read this quote from CalTech, focus in on the portion of the statement applying to claims: “estoppel applies . . . to all claims and grounds . . . which could have been included in the petition.” The implication from this statement in CalTech is that an IPR that challenges one claim of a patent could create estoppel vis-a-vis all claims of the patent. Now, this could be a sensible rule, but it doesn’t appear to be the rule codified by the statute.
The CalTech estoppel was being battled-out in district court infringement litigation and so Section 315(e)(2) was the focus. The second case, Intuitive Surgical looks instead to the parallel PTO-focused provision of Section 315(e)(1).
Intuitive filed three IPR petitions against the claims of Ethicon’s U.S. Patent No. 8,479,969. All three petitions were granted and the PTO proceeded toward final written decision. But along the way the timing of the three became a bit offset. In January 2020, the PTO issued final written decisions in two of the IPRs — both siding with the patentee and concluding the challenged claims had not been proven unpatentable. At that point, the estoppel of Section 315(e)(1) kicked in — Intuitive could no longer maintain an IPR against , and the PTAB ruled that Intuitive could no longer maintain an IPR against the claim already blessed as patentable. On appeal, the Federal Circuit affirmed that judgment over some fairly weak arguments from Ethicon. (Ethicon argued, inter alia, it was too tough and thus not reasonable to put all the arguments in one 14,000 word IPR petition. Ever heard of choosing your best arguments?).
In its opinion, the Intuitive court suggested that an IPR petition might avoid the estoppel by filing “multiple petitions where each petition focuses on a separate, manageable subset of the claims to be challenged—as opposed to subsets of grounds.” According to the court, this approach avoids estoppel because “§ 315(e)(1) estoppel applies on a claim-by-claim basis.” This conclusion appears directly contrary to the statement issued by the CalTech court one week prior.
Prior to CalTech, a the Federal Circuit had already ruled that estoppel applied on a claim-by-claim basis. See, for example, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1052 (Fed. Cir. 2017). However, those cases were based upon pre-SAS understanding of IPR procedure the source of those determinations appears to be Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016). The Shaw decision is important here because it was expressly overruled and rejected by CalTech. All this give the CalTech approach some credential. However, I believe that ultimately we’ll see the “all claims … which reasonably could have been included in the petition” to be an errant bit of dicta that will not be followed by the subsequent panels. I call it dicta, because the patentee in CalTech requested and obtained estoppel only for claims that Apple actually challenged via IPR petition. There was no decision regarding non-petitioned claims.
All that said, the CalTech panel may want to consider rewriting this critical sentence to make clear that estoppel applies only to claim challenged in the petition, but to any ground that reasonably could have been included in the petition.