Estoppel; Pre-SAS Partial Institution Cases; and Rethinking Caltech

by Dennis Crouch

The PTAB is the busiest patent court in the country.  The Board cancels lots of patent claims, but also regularly sides with patentees in the Final Written Decision (at least as to some claims).  Post-IPR estoppel attaches to the cleared-claims and prevents the petitioner (or privies) from later challenging the validity of those claims on grounds actually raised in the IPR as well grounds the petitioner “reasonably could have raised during the inter partes review.”  35 U.S.C. 315(e).  In its 2022 Caltech decision, the Federal Circuit overturned its prior Shaw precedent and found that the estoppel broadly applies to all claims challenged in an IPR and all grounds “which reasonably could have been asserted” against the petitioned claims. California Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 991 (Fed. Cir. 2022) (“Caltech”).

More recently, the court was faced with unique partial-institution circumstances in Click-to-Call Techs. LP v. Ingenio, Inc., 45 F.4th 1363 (Fed. Cir. 2022), and again the court concluded that broad estoppel is appropriate.  The court particularly concluded that estoppel applies even to non-instituted claims.  In a new petition for en banc rehearing, the accused infringer asks the following question:

Whether 35 U.S.C. § 315(e)’s IPR estoppel provision applies only to claims addressed in the final written decision, as consistent with the holdings in Shaw, and Intuitive Surgical, and whether that interpretation remains correct after SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).

Ingenio En Banc Petition.

You’ll recognize Click-to-Call  from the 2020 Supreme Court decision finding institution decisions ordinarily not judicially reviewable. Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020) (Thryv is a DBA name of Ingenio).

The unique circumstances mentioned above are that the PTAB only partially-instituted the IPR.  In particular, the USPTO granted institution of most of the challenged claims of Click-to-Call’s US5818836 based upon the “Dezonno” reference, but denied institution with-regard-to claim 27 and also refused to conduct an IPR relying upon the Freeman reference (the only ground raised in the IPR for challenging claim 27).  All of the instituted claims were eventually found unpatentable and cancelled in the IPR–but that left claim 27 still standing.  Partial institution was eventually ruled improper by the Supreme Court in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).  Since the IPR appeal was still pending, post-SAS remand would have been available to re-institute and pick-up claim 27, but neither party asked the PTAB to take-up that task.  The patent challenger had already won on all-but-one claim before the PTAB, and re-institution might have required a new trial on all of the challenged claims.  The patentee likely saw the PTAB as an unfriendly forum and had no interest in filing a motion to the effect of “yes, may I have another lump please.”   Note that Ingenio contests this procedual idea — arguing that dismissal order by the Supreme Court ended the case without remand.

Although I identified this as a “unique circumstance,” partial institution was a regular practice for several years prior to SAS and so there are hundreds of patents in a similar position.  Point being, this issue is goes beyond the parties here and will have a larger impact, if only transitionary post-SAS.

Once the IPR concluded, district court litigation restarted, focusing on claim 27.  The district court sided with defendant Ingenio on summary judgment. In particular, the court found claim 27 was invalid based upon Dezonno, the same prior art reference used by the PTAB to cancel all the other claims.  Click-to-call argued estoppel, but that argument was rejected.  On appeal, the Federal Circuit reversed, holding that “the district court erred in not applying IPR estoppel under 35 U.S.C. § 315(e)(2) to claim 27 based on Dezonno.”

Ingenio has argued that estoppel applies only to invalidity challenges to claims that were subject to the IPR final written decision.  The statute is not crystal clear on this point–even more so now that we recognize that partial institution was improper.  This is a case where ask about the correct statutory interpretation in a situation where we now know that the agency acted improperly.

But, lets look at the statute.  315(e) estoppel applies on a claim-by-claim basis as follows:

The petitioner in an inter partes review of a claim in a patent … that results in a final written decision … may not assert [in patent litigation] that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

Id.  I have been struggling through this statute.  In my reading, the most straightforward construction sides with the Federal Circuit in this situation. It requires that estopped claims be part of the IPR and that the IPR result in a final written decision, but does not require that all of the estopped claims be adjudged in the final written decision.

The en banc petition also suggests that the court may want to reconsider its decision in Caltech.  In particular, the three-judge Caltech panel finding broad estoppel overturned the prior Federal Circuit panel decision in Shaw.  Ordinary rules of  appellate precedent prohibit one panel from overturning the decision of a prior panel. But, the Caltech judges found that the Supreme Court’s intervening decision in SAS so abrogated the reasoning of Shaw as to open the door for panel action. The petition  argues that was improper:

The Caltech panel incorrectly relied on SAS to overturn Shaw. SAS did not itself overturn Shaw, and in fact analyzed a different statute entirely (35 U.S.C. § 318(a) vs. § 315(e)(2)). Nonetheless, the Panel held that, because Shaw’s reasoning rested on the assumption that partial institutions were permissible, SAS’s elimination of partial institutions required Shaw to be overruled. But that is incorrect. Shaw was not limited to the particular facts of its case, but instead held that the plain language of § 315(e )(2) prohibits IPR estoppel from attaching to grounds that were not part of the IPR, which began at institution. SAS did not undermine or challenge the validity of Shaw as a textual construction of § 315(e)(2).

Petition.  If you recall, the Caltech decision is also still pending on petition for writ of certiorari before the Supreme Court.  Thus, this case may provide an opportunity for the Federal Circuit to preemptively speak to the high court.

28 thoughts on “Estoppel; Pre-SAS Partial Institution Cases; and Rethinking Caltech

  1. 5

    “The PTAB is the busiest patent court in the country.”

    Respectfully Dennis, please be careful here. For while the PTAB is certainly a tribunal (hence, “Board”), it is no court.

    Far from it.

    To label this easily-manipulated, puppet-stringed, innovation-toxic, experiment-gone-bad, America-embarrassing entity a court does a great disservice to our country’s actual, real courts and its judges.

  2. 4

    As to Prof. Crouch’s choice of syntax in this article (and the emphasis on “during”), perhaps less spin towards a desired Ends (no surprise that the aim is less estoppel), and at least some logical thinking that reflects just what “or could have raised” Must entail.

    Further, even the word “during” should reflect and recognize that the very start is the submission of the IPR request, and thus, even the (nominal) front end of the Institution Decision IS during.

    This is just not that difficult.

    1. 4.1

      > reasonably could have raised

      My recollection is that any patent that survived IPR was supposed to be “gold-plated” i.e., the patentee wouldn’t have to keep re-fighting validity challenges absent exceptional circumstances.

      This was supposed to be in contrast to the old system, where it was common for defendants to burn their 2nd-best prior art reference at the USPTO and save their best reference for the infringement suit, thereby getting two bites at the (unfortunately random) invalidity apple.

      1. 4.1.1

        My recollection is that any patent that survived IPR… wouldn’t have to keep re-fighting validity challenges absent exceptional circumstances.

        I can remember going around to various clients in 2012 as part of a sort of travelling road show, urging them to use my firm to bring IPR challenges. The overwhelming response was that no one wanted to do an IPR because the estoppel provisions were too daunting. It has been crazy to see how wrong that intuition proved.

    2. 4.2

      Please explain how your “analysis” is consistent with 35 usc 314(a) or shut your piehole. Thank you.

    3. 4.3

      Awaiting moderation. Interesting how your nonsense cannot be challenged, even though everybody knows that it is nonsense.

      1. 4.3.1

        Lol – like the “anoun” better than the Nym theft, and cannot help but notice that the level of emotion in your post (sans reasoning) hints that you are my pal with the ever shifting historical pseudonyms — and clearly “anon” IS historically significant in the patent sense.

        Be that as it may, your missive is in total error.

        To wit, the section you speak of accords fully with my posts.

        That section:

        (a) Threshold.—
        The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

        Clearly, the “start” (and hence and notion of ‘during’) is with the action of the petitioner – and includes pre-institution consideration.

        It is only logical, given how ANY action IS driven by the petitioner, that estoppel begins at the beginning. The Petitioner — and ONLY the Petitioner can decide what and what not to include in their challenge.

        This Active Choice is a great power. And as you may remember from my Uncle Ben, with great power comes great responsibility.

        1. 4.3.1.1

          Thanks for verifying your nonsense. Your definition of “during” includes “before.” If the ground shakes during an earthquake, the ground also shakes before the earthquake. Got it.

          1. 4.3.1.1.1

            My back-to-nym-theft friend,

            Your “earthquake” example is false.

            You seem especially challenged here so let me give you a scenario to contemplate:

            Are institution decisions made out of the blue and BEFORE the petitioner has started formulating the choices of what their challenge will be?

            1. 4.3.1.1.1.1

              Of course my earthquake example is false. It’s based on your nonsense.

              1. 4.3.1.1.1.1.1

                I see that basic logic escapes you still.

                An example “being based on” is not what makes its false.

                And yes, I noted that you had nothing to say about institution decisions “out of the blue.”

                1. Everybody’s still waiting for you to explain how your “analysis” is consistent with 35 usc 314(a). Take your time.

              2. 4.3.1.1.1.1.2

                Nice attempt. Except for the part where you think nobody sees how you think you’re dodging answering the question.

                1. More of the same from my pal with the shifting historical pseudonym….

                  (albeit, this is by far the Best choice of historical pseudonym)

                  Shifty, starting with your false assertion and coupled with a projection is no way to go through life, son.

                  It is your turn for answers: at what point (for the party TO WHICH estoppel applies) does that party start? This basic logic might help you understand what “begin at the beginning” means.

                2. More of the same

                  Yet again…

                  More of the same from my pal with the shifting historical pseudonym….
                  
(albeit, this is STILL by far the Best choice of historical pseudonym)
                  
Shifty, starting with your false assertion

                  [to wit, Shifty has asserted that anon thinks that nobody sees how anon thinks that anon is dodging the action of answering the question]

                  My oh my, are you taking speech lessons from Kamala?

                  and coupled with a projection

                  [to wit, Shifty is projecting: that anon is engaging in some improper action AND is thinking that no one is noticing the improper action]

                  The only improper action is yours, Shifty. The only person here not Actually answering anything is you.

                  Maybe stop the projecting and the false presumed conditions and actually engage.

                  It is Your lack of engagement and insistence on false game playing (in your 0bsess10n over me) that is no way to go through life, son.

                  
It is STILL your turn for answers: at what point (for the party TO WHICH estoppel applies) does that party start? This basic logic might help you understand what “begin at the beginning” means.

This is not amazing at all, and the sadness is that you have nothing actually to add, except for your 0bsess10n with me.


                3. The statement, “Nobody is f00led.” is correct as far as it goes, but merely displays your rather stale habit of projecting.

                  Your post — again — advances nothing but exhibiting your 0bsess10n with me.

                  Further, my enterprising off of YOUR choices in how you post is very much of public record, so your false assertions simply do not reach to what I post.

                  And the cherry (of course) is that what I post is entirely accurate.

  3. 3

    It would be all for the best if the CAFC were to take this en banc, because the status of Shaw as over-ruled by another 3-judge panel applying SAS is still a bit uncertain. En banc consideration of this question would lend greater clarity to the status of Shaw.

    1. 3.1

      At least here there is an intervening SC case — contrast with the MESS of 101 cases in which panel after panel ping-ponged with layer after layer of rope to the Gordian Knot.

  4. 2

    Re: “The Board cancels lots of patent claims, but also regularly sides with patentees in the Final Written Decision (at least as to some claims).”
    Yes, but the Board sides with more patentees in the far larger number of Board denials of petitioner requests to even institute an IPR. [No estoppel, but no IPR defense – only jury trial defense arguments left.]

  5. 1

    I read 315(e) the opposite way. In my view the most straightforward reading supports Ingenio. The term “the claim” in the phrase “may not assert [in patent litigation] that the claim is invalid . . .” clearly refers back to the antecedent “a claim” in the phrase “an inter partes review of a claim in a patent . . . that results in a final written decision.”

    Here, there was no inter partes review of claim 27 that resulted in a final written decision.

    1. 1.1

      Sure, but what do you do with that “or reasonably could have raised”? Naturally, once the IPR is instituted, no additional claims can be added, so if you say that estoppel only attaches as against claims that were involved in the IPR, then you are turning that “reasonably could have” into surplusage.

    2. 1.2

      I think this is fair – in my view the statute is not clear. And, for this particular case we’re thrown a wrench because it requires a situation that cannot arise under the law as interpreted by the Supreme Court in SAS.

      1. 1.2.1

        … “that cannot arise… as interpreted

        Wow – the level of effort being expended to NOT recognize a necessarily logical conclusion.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture