CAFC Clarifies Ruling on IPR Estoppel in Errata on Caltech v. Broadcom

Earlier this month, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. District Court for the Central District of California in a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc. As part of that decision, the CAFC affirmed the district court’s decision barring raising invalidity challenges based on known prior art after an IPR litigation. The court took the opportunity to overrule Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. (Fed. Cir. 2016) and clarify that estoppel applies to claims and grounds not in the IPR but which reasonably could have been included in the petition.

On February 22, however, the CAFC published an errata to that opinion. While it did not include its reasoning for the clarification to the February 4 precedential opinion, the original opinion referenced the statute on estoppel, 35 U.S.C. § 315(e)(2), which addresses estoppel as a result of an IPR on a per claim basis rather than a per patent basis. So the court’s errata clarifying that estoppel applies only to claims actually challenged in an IPR is not a surprise. The court’s original opinion stated 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.” That left the mistaken impression that estoppel applies to the entire patent, even as to claims not included in the petition. The court’s errata clarifies that estoppel applies only to the “challenged claims,” i.e., the claims challenged in the IPR petition. Claims not challenged in the petition are not subject to estoppel.

Without this clarification, there certainly would have been challenges to the Federal Circuit’s original opinion, as it would have required petitioning on every claim in a patent in an IPR, out of concern that estoppel might apply to all claims in the patent, which would have been an oftentimes impractical and more expensive result.

The Federal Circuit’s clarification may not require much, if any, course correction in ongoing litigation. The clarification was timely, coming only about a couple of weeks after the original opinion. Before the original opinion, it has been generally understood that only claims challenged in an IPR are subject to estoppel, consistent with the Federal Circuit’s clarification. Had the original opinion stood without clarification and been applied going forward, IPR practice and estoppel would have changed substantially, with many more claims being challenged in IPR out of a concern for estoppel applying to unchallenged claims. The Federal Circuit’s clarification arrived early to avoid going down that path.

The Federal Circuit’s original opinion, as clarified, is enduring in that estoppel applies to all grounds – whether stated in the IPR petition or not – that could have been asserted against the challenged claims. A practical effect of this is that IPR petitioners will have more motivation to state additional IPR grounds on the challenged claims, out of an estoppel concern, as has already been the case for many petitioners.

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Author: billperry
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