High Court Asks for SG Views on Apple’s Petition Challenging Federal Circuit Approach to IPR Estoppel

“The petition claims that the Federal Circuit overruled its own precedent in adopting ‘an atextual interpretation of Section 315(e)(2) that applies estoppel to any ground that reasonably could have been raised in the petition filed before an inter partes review is instituted.’

The U.S. Supreme Court yesterday invited the U.S. Solicitor General to provide its views on Apple’s petition asking the High Court to clarify the proper application of estoppel in inter partes review (IPR) proceedings.

The case stems from a February, 2022, decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which the court issued a mixed precedential decision that affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California. That ruling related to 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. concerning Caltech’s U.S. Patent 7,116,710 (‘710 patent), U.S. Patent 7,421,032 (‘032 patent), and U.S. Patent 7,916,781 (‘781 patent).

As part of the decision, the CAFC affirmed the district court’s holding 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.

Later, on February 22, 2022, the CAFC clarified in an errata 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.”

Apple appealed to the Supreme Court in September 2022, arguing in its petition that when an IPR of a patent claim results in a final written decision, “Section 315(e)(2) estops a petitioner from challenging the validity of that patent claim in district court on ‘any ground that the petitioner raised or reasonably could have raised during that inter partes review.” The petition claims that the Federal Circuit overruled its own precedent in adopting “an atextual interpretation of Section 315(e)(2) that applies estoppel to any ground that reasonably could have been raised in the petition filed before an inter partes review is instituted.”

In its reply brief, Caltech said the Federal Circuit’s interpretation of 35 U.S.C. § 315(e)(2) was consistent with the plain text and ordinary meaning of the statute. The brief further argued that Apple’s attempts to paint the district court’s view that Apple reasonably could have asserted its new invalidity grounds in its IPR petitions since it “undisputedly knew of all those grounds at the time of filing its petitions” as contrary to the statute is an “unnatural and implausible reading of the statute.” To adopt this interpretation would “limit estoppel to those grounds that a patent challenger actually included in its inter partes review petitions,” Caltech added.

Two amicus briefs have also been filed with the Supreme Court, both supporting petitioners. A brief filed on behalf of Patent Law Professors argues that the Federal Circuit decision should be reversed and the Court should hold that “estoppel following inter partes review (IPR) extends only to grounds that a party ‘raised or reasonably could have raised during that inter partes review,’
with ‘during that inter partes review’ meaning the time period between institution and final decision, as indicated by the statutory text.” The brief adds that a too-broad reading of the statute raises issues of fairness and complicates future proceedings by requiring determinations about what prior art petitioners should have known about at the time of filing.

Unified Patents’ brief similarly leans toward Apple’s view that estoppel should apply only to the time period after institution through the final written decision and urges the Court to “seriously consider” this argument, but ultimately supports granting certiorari chiefly to ensure “that petitioners and patent owners have a final, conclusive interpretation of the estoppel provisions.”


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Author: alexskopje


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Join the Discussion

7 comments so far.

  • [Avatar for Anon]
    January 21, 2023 10:45 am

    I find it further interesting that even SCOTUSBlog does not have the Appendix A to the Professor’s brief.


  • [Avatar for Anon]
    January 20, 2023 08:27 am

    The Prof. Laser link does not include Appendix A (the list of signing professors).

    Would be interested in that list, given as the brief (appears – albeit at only a cursory glance) does show some reworking from the singular view of Prof. Laser, reflected at her prior published piece at: https://scholarship.law.ufl.edu/cgi/viewcontent.cgi?article=1430&context=flr

  • [Avatar for Anon]
    January 19, 2023 10:23 am

    If indeed, the aim is “he primary concern it raises is panels overruling other panels,” this aim is not clear (and this topic is hardly the one that deserves the most vocal pushback; think eligibility and the Gordian Knot).

  • [Avatar for Eileen McDermott]
    Eileen McDermott
    January 19, 2023 09:22 am

    The article wasn’t about your brief so it admittedly doesn’t get into the substance and nuances, but your brief says that Apple’s petition presents “a strong argument” and that their position must be seriously considered…is that not “leaning toward” Apple’s view? However, I specifically noted the brief is chiefly concerned with ensuring certainty. Not sure what you take issue with precisely.

  • [Avatar for Jonathan Stroud]
    Jonathan Stroud
    January 19, 2023 08:21 am

    I take issue with this characterization of our brief. We did not ultimately support either interpretation, and made that explicit. The primary concern it raises is panels overruling other panels, when the court could easily have done so en banc (even here, it could have used procedural mechanisms to effectively certify the ruling) .

  • [Avatar for F22strike]
    January 18, 2023 02:30 pm

    The triad of Congress, the SCOTUS, and the USPTO has made US patents essentially worthless. Patents on the most valuable inventions will be serially attacked in IPRs and in seemingly endless court litigation. Apple is pursuing its policy of efficient infringement which has been sanctioned by the triad. It prefers to endure years of IPRs and court proceeding, and pay tens of millions in legal fees, rather than enter into a license agreement which is clearly available from Caltech in this case. Its patents that are involved have already survived at least ten IPRs.

    If you are a business, you have two choices regarding your potentially valuable invention: 1) spend $50K and 3-4 years to hopefully obtain a US patent; or 2) opt instead for no patent protection. Choice number 1 is a loser because either the invention never achieves commercial success, or if it does, you cannot effectively enforce the patent. Choice number 2 still potentially allows for some protection of the invention via trade secret laws and avoids the time consuming and expensive legal quagmire that has engulfed Caltech.

    Companies pay thousands of dollars in USPTO fees to obtain a patent. They pay thousands more to maintain it. Then the USPTO collects tens of thousands in fees when it cancels its claims in an IPR proceeding and doesn’t refund the USPTO fees to the patent owner. Does anyone see a conflict of interest in this practice? The very substantial USPTO fee collections and the bonuses paid to PTAB judges clearly incentivize the extremely high rate of IPR petition grants and claim cancellations that are listed in the published IPR statistics.

    The US patent system is clearly broken and big-tech has bought off Congress to ensure that there will be no fix. The voting public couldn’t care less about the health of the US patent system. CEOs and general counsels of US companies are not stupid. They will pare back their US patent application filings substantially. It appears that IBM has already responded in this fashion. It will take longer for foreign companies to get the message that they are, in most cases, wasting their money pursuing US patent protection.

  • [Avatar for Alan]
    January 18, 2023 12:55 pm

    Since raising new art after institution is not permitted, having the Supreme Court rule in Apple’s favor would render Section 315(e)(2) substantially irrelevant. It would basically mean that Apple could raise any other prior art that was not used in the IPR. That would be an absurd result and would defeat the alleged benefits of reducing litigation costs. An infringer could select certain art to use in an IPR and reserve other art to be used in a district court litigation.

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