Laser v. Dolin: Estoppel and the Billion Dollar Question of Whether an IPR Petition is filed “during” the IPR

by Dennis Crouch

The level of estoppel was a sticking point a decade ago in the lead-up to the America Invents Act (AIA).  Patentee’s were concerned with repeat harassment by accused infringers; Accused infringers were concerned that IPRs would be ineffective and that they would then lose their right to challenge the patent in court. We now know that IPRs are very effective, but sometimes patent challengers would still like a second bite.  That is the situation in the pending petition for certiorari in Apple Inc. v. California Institute of Technology, 22-203 (U.S.).  Apple lost its IPRs against CalTech and now wants to bring additional invalidity challenges in court that it could have raised in its IPR petitions.

In the 2011 AIA legislation, Congress created two forms of petitioner estoppel, each of which attach only if the IPR petition is granted and the PTAB reaches a Final Written Decision, and only with respect the claims actually adjudged in the IPR final written decision.

315(e)(1) Estoppel of Further Proceedings Before the USPTO: The petitioner [or privy/RPI] may not request 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)(2) Estoppel of Invalidity Arguments in Court: The petitioner [or privy/RPI] may not assert either … that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

35 U.S.C. 315(e). As you can see, both provisions create estoppel barring a petitioner from later raising “any ground that the petitioner raised or reasonably could have raised during that inter partes review.”  The question in

Apple v. CalTech: CalTech sued Apple and Broadcom for infringing its patents covering wireless communication chip logic. Apple responded with several IPR petitions. The petitions were granted initiating the IPR, but the USPTO eventually sided with patentee in its final written description. Apple is thus prohibited from re-challenging the validity of the already challenged claims “any ground that the petitioner raised or reasonably could have raised during that inter partes review.”

Back in district court, Apple attempted to raise additional invalidity challenges, but the district court barred those defenses. The district court concluded that Apple could reasonably could have included those as grounds in its IPR petition and thus barred under 315(e)(2). CalTech eventually won a $1 billion jury verdict.  On appeal, the Federal Circuit vacated the verdict on other grounds, but affirmed on the issue of estoppel. The Federal Circuit particularly held that estoppel extends to “all grounds not stated in the petition but which reasonably could have been asserted against the claims included in the [IPR] petition.” California Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976 (Fed. Cir. 2022), overruling Shaw Industries Group, Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016).

Apple’s new petition to the Supreme Court identifies what it sees as a fundamental flaw in the Federal Circuit’s textual analysis. The Federal Circuit concluded that Apple was estopped from later raising grounds that it reasonably could have raised in the inter partes review petition. But, the statute as written creates a slightly different test — asking what “reasonably could have raised during that inter partes review.” The following is Apple’s question presented to the Supreme Court:

Whether the Federal Circuit erroneously extended IPR estoppel under 35 U.S.C. § 315(e)(2) to all grounds that reasonably could have been raised in the petition filed before an inter partes review is instituted, even though the text of the statute applies estoppel only to grounds that “reasonably could have [been] raised during that inter partes review.”

Apple question presented.

The IPR process begins with an IPR petition. 35 U.S.C. § 311. The statute charges the USPTO Director the role of instituting the IPR, although that duty had been delegated tot he PTAB. 35 U.S.C. § 314.  After institution, the PTAB conducts a trial and issues its final written description.  Apple’s basic argument is that the statute’s use of “during” excludes potential actions that could have taken place prior to institution.  To wit, Apple recognizes that it reasonably could have made additional arguments in its IPR filings, but those took place prior to the IPR; And, once the IPR petition is granted, the challenger no longer has any opportunity to raise any other grounds to challenge the patents.  In this scenario, the statute is practically limited to cover only grounds actually raised.  Apple explains:

When “an inter partes review of a claim in a patent … results in a final written decision,” a petitioner is estopped from asserting in district court litigation only “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2) (emphasis added). By expanding statutory estoppel to cover any ground that could have been raised in a petition before an inter partes review even begins, the Federal Circuit effectively rewrote the statute. This Court’s review is urgently needed to restore Section 315(e) to its proper scope.

Apple Petition.

Apple’s petition relies heavily on the work of Cleveland-Marshall Prof. Christa Laser and her 2018 Florida Law Review article.  Christa Laser, The Scope of IPR Estoppel: A Statutory, Historical, and Normative Analysis, 70 Fla. L. Rev. 1127 (2018).  Laser suggested that the Supreme Court reinterpret the statute and “should hold that IPR estoppel applies narrowly only to grounds actually raised and instituted.” Id.  Baltimore Prof. Greg Dolin penned a responsive article concluding that Laser’s approach is too narrow. Gregory Dolin, Estopping Patent Harassment: A Response to Christa J. Laser, 70 Fla. L. Rev. F. 136 (2019). From my view, Dolin and the Federal Circuit have the better view on this one over Apple and Laser.  We’ll see this fall whether the Supreme Court agrees.

35 thoughts on “Laser v. Dolin: Estoppel and the Billion Dollar Question of Whether an IPR Petition is filed “during” the IPR

  1. 8

    Lots of typos in this post, and apparently in the headline..

  2. 7

    The language used in the statute is “during that inter partes review.” It does not state “after inter partes review is instituted.” The latter interpretation seems superfluous at best, nonsensical at worst. A petitioner is NOT free to tack on bases and references at will once the IPR is instituted.

  3. 6

    The topic here would make an interesting ‘intersection’ with the Ethics portion of this blog, as the Academic Laser floats a (imho – sanctionable) “theory” that does not survive even a casual logical evaluation.

    Near as I can tell about this “Academic,” her “desire” is absolutely the wrong place for teaching future attorneys how to apply critical thinking.

    See: link to law.csuohio.edu

    Hint: if you are so focused on “how the law Should Be,” then the role you seek is in politics.

    1. 6.1

      Re: How would you re-write or mark-up S. Tillis’ latest draft patent bill? A good question. But the better question is how would you do so in a way that would not still leave it strongly opposed by powerful industry interests on one side or the other of Alice or Mayo unpatentable subject matter decisions and/or expanding patent trials? And also not exceeding what some argue are Constitutional limitations on patentable subject matter that cannot be exceeded by legislation?

      1. 6.1.1

        Oh please – let’s not give any weight to the so-called “Constitutional Keep-outs” nonsense.

        What’s more, kowtowing (to the vocal and monied Efficient Infringers) is just NOT what is needed.

      2. 6.1.2

        I suppose it is a matter of political power, since very little legislation is “loved by all”, there is always a group of mal-contents it seems… I think to ferret out “what’s right”, and aim for what is right.

        I see the author of this old article hit the nail on the head in the 3rd last line or so of the abstract, when they mention broad claims which are at the edge of abstract territory; isn’t that the crux of what all these cases have been about ? haha, in the past I complained about “the war on claim breadth”. Indeed there are no constitutional limits on patentable subject matter, this is , correct me if I’m wrong…. found in 35USC101, creating implicit exceptions is an exercise in Judicial Creativity !! Sometimes it is enjoyable a little to look at older articles, what ppl were saying back in ’14 like this one:
        link to akingump.com

        cheerio

      3. 6.1.3

        Sorry, this was intended as a response to question 1 below, but note that C.W.s response at 6.1.2 includes a hotlink to the interesting akingump.com 2014 legal article. That article itself [not me] is one of those raising and discussing the argument that there may be Constitutional limitations on patentable subject matter. Also, that article distinguishes over-broad or preemptive-claiming issues from the traditional Sup. Ct. list of what they have considered to be unpatentable subject matters.

    2. 6.2

      Re: “..if you are so focused on “how the law Should Be,” then the role you seek is in politics”

      An apt comment on many of the comments on this blog as well, which is supposed to be legally educational.

    3. 6.3

      Wow Anon – that seems wrong. Note that Apple and Qualcomm and their top attorneys have hung their hats on her argument.

      The problem here is that the law has a minor gaps that was exacerbated by SAS. Pretty good argument that when Congress wrote “during”, it means “during” and not “before.”

      1. 6.3.1

        What it “seems” is just not so.

        This is very simple from a logical perspective.

        The Academic’s “driver” is visceral: she expounds on what she feels the law “ought to be.”

      2. 6.3.2

        It depends on how you define “during” in the proper context in its location in that statute.
        But just for comparison, would you call the filing and service of a complaint in a lawsuit as being “before” a lawsuit?
        Also note that no one here has rebutted my comment 4 here that “..prior art .. can only be raised in the petition itself, not after the trial proceeding is already initiated, which would make that estoppel interpretation totally eliminate any estoppel at all.”
        As for “Apple and Qualcomm and their top attorneys have hung their hats on her argument” it may be that they can find no other hat to grab onto after losing below, and have unrestrained legal budgets for “Hail Mary” hat tosses into the less that 300 to 1 odds of any Sup. Ct, cert petition.
        [In some cases I think cert petitions may even importantly serve to prolong the employment of in-house attorneys who had predicted victories in losing cases and/or counseled refusals of settlements for considerably less that final judgment amounts plus accumulated interest.]

        1. 6.3.2.1

          [N]o one here has rebutted my comment 4 here that “..prior art .. can only be raised in the petition itself, not after the trial proceeding is already initiated, which would make that estoppel interpretation totally eliminate any estoppel at all.”

          True. Apple’s proposed construction here makes the “or could have” estoppel provision essentially meaningless. I agree with all those saying that the cert petition seems an uphill climb.

          1. 6.3.2.1.1

            I dunno, Greg. SCOTUS seems to have a predilection for screwing up patent law whenever possible (or relatedly, to decline every opportunity to fix its earlier screw-ups). So while I agree that the interpretation proposed by Apple is non-sensical b/c it will render the estoppel provisions superfluous, SCOTUS doesn’t care and might even welcome for a way to further tank patent law. And this SCOTUS certainly won’t care the that proposed interpretation goes against the intent of including those estoppel provisions in the first place. So stay tuned.

            1. 6.3.2.1.1.1

              SCOTUS seems to have a predilection for screwing up patent law whenever possible (or relatedly, to decline every opportunity to fix its earlier screw-ups).

              Regrettably true. I never welcome cert. petitions in the patent law space, because often the best that one can hope for is that the SCOTUS might ignore it. They almost never take a case to make the law better.

      3. 6.3.3

        Dennis, it’s a Hail Mary. You play the hand you were dealt. Apple’s attorneys don’t care: they get paid win or lose.

        1. 6.3.3.1

          They should care (and hence, why I propose that this would actually make a good line from the ethics standpoint).

          Of course, that angle also reinforces my distaste of “Academics,” which was also ‘reinforced’ on reading what this particular academic has to say about herself.

          In a way, I wish that I did have her as a professor, as I would shred her in class.

        2. 6.3.3.3

          Apple’s attorneys will be paid significantly less than the return Apple will earn on the $1 billion during the pendency of this and the other appeals that it will no doubt continue to file until the plaintiff cries, “Uncle” and agrees to settle for something less.

          1. 6.3.3.3.1

            Interest will be added, but right now the interest rate is less than inflation.

    4. 6.4

      “Hint: if you are so focused on ‘how the law Should Be,’ then the role you seek is in politics.”*

      *Or a CAFC or SCOTUS judge.

    5. 6.5

      It’s a little absurd to say Professor Laser’s view is “sanctionable,” particularly when there were multiple district court cases interpreting the statute in exactly that manner before her article. This includes judges in two of the most popular districts for patent litigation. See, e.g., Intellectual Ventures I LLC v. Toshiba Corp., 2016 WL 7341713, at *12-13 (D. Del. Dec. 19, 2016); Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 2017 WL 235048, at *3-4 (N.D. Cal. Jan. 19, 2017).

      This interpretation is clearly contrary to the “intent” of Congress, but it does have some basis under the plain text of the statute. (It would be nice if Congress could draft a clear statute.) The view has now been rejected by the Federal Circuit in Cal Tech (and I very much doubt the Supreme Court will grant cert).

      Also, it doesn’t really make sense to talk about “sanctioning” an academic for one of her articles. If you think it does, I suggest you read the thing that allowed Congress to pass the patent act–in particular, please view its first amendment.

      It also doesn’t make sense to talk about sanctioning a litigator for previously making this argument (particularly when some district courts had adopted the view). Please review Rule 11 of the Federal Rules of Civil Procedure. I guess a litigator today would have to be careful about making the argument,
      and would certainly have to notify the court about the Cal Tech decision. But there’s nothing wrong with attorneys advocating that a legal interpretation being overturned.

      1. 6.5.1

        It is not absurd as you would make it out as this is clearly not meant merely as an exercise of first amendment rights.

        Also – as you appear to be new and do not understand the context of Ethics (note my past and continuing references to a whole section of this blog that lay fallow for more than an entire year), those involved in law ARE ethically constrained — First Amendment or otherwise.

        IF Academics want to merely navel gaze, that would be one thing.

        Such though is not the case.

        Not only do they Opine on the law (So-called Friends of the Court), but they also actively shape (some may say indoctrinate) the minds of future lawyers, and thus should have even more (not less) ethical constraints than mere attorneys.

      2. 6.5.2

        Please pardon potential repeat as the system had a glitch when I hit post

        It is not absurd as you would make it out as this is clearly not meant merely as an exercise of first amendment rights.

        Also – as you appear to be new and do not understand the context of Ethics (note my past and continuing references to a whole section of this blog that lay fallow for more than an entire year), those involved in law ARE ethically constrained — First Amendment or otherwise.

        IF Academics want to merely navel gaze, that would be one thing.

        Such though is not the case.

        Not only do they Opine on the law (So-called Friends of the Court), but they also actively shape (some may say indoctrinate) the minds of future lawyers, and thus should have even more (not less) ethical constraints than mere attorneys.

        1. 6.5.2.1

          “Not only do they Opine on the law (So-called Friends of the Court), but they also actively shape (some may say indoctrinate) the minds of future lawyers, and thus should have even more (not less) ethical constraints than mere attorneys.”

          Opine, shape minds, and should have more constraints. Yes !! More constraints, for everybody !!!!!!! BTK

          1. 6.5.2.1.1

            Well Chrissy, as you never made it to being an attorney, let’s just say that your understanding of legal ethics is not up to par here.

  4. 5

    There is no there there.

    Apple strives for a ring too high, a bridge too far.

    Petition denied.

    Easy call for SCOTUS.

    Very easy call.

  5. 4

    There is no limit to the ingenuity of lawyers to argue a different interpretation of a statute that has been perfectly clear to participants since it was enacted for reexaminations and then re-enacted for IPRs. Also, this argument against estoppel is inconsistent with both, in that prior art in both proceedings can only be raised in the petition itself, not after the proceeding is already initiated, which would make that estoppel interpretation totally eliminate any estoppel at all.

    1. 4.1

      Even filing supplemental evidence after an IPR petition is quite limited. As one firm stated: After institution, beyond a reply, petitioners may have options for providing more support to show a reference qualifies as prior art. [correct date, in particular] “[I]f a patent owner does not challenge the reference’s status as a printed publication, the petitioner may move to submit the declaration through the supplemental information process.” Hulu, IPR2018-01039, Paper 29, at 15 (citing 37 C.F.R. § 42.123). But submitting additional evidence does not mean a petitioner can change its theories. Id. Furthermore, although not specifically addressed by the Hulu panel, petitioners may serve supplemental evidence in response to patent owner objections to evidence. See 37 C.F.R. § 42.64(b)(2).

  6. 3

    The question seems to be “when does the IPR begin” so as to be during the IPR. I would argue that it begins with the filing of the IPR since that starts the process. The decision of the PTO to proceed or not is still part of the process and, hence, if there were issues that could have been raised in the initial filing, those are captured by the language of the statute..

  7. 2

    Yup, Laser is pointing in the wrong direction. The pablum at the end of Dolin’s article praising Laser’s analysis is cringeworthy. He should have just stayed that she did not take into consideration the legislative history, which he did, and not kiss her arse with all that faint praise for her incorrect analysis of the statute.

    1. 2.1

      Thanks PL – I can ‘safely’ flush both sides here.

  8. 1

    How would you re-write Tillis’ draft ? Markups please, if you have time, as just an academic exercise. How would you mark it up ?

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