Solicitor General Tells SCOTUS to Reject Apple’s Bid to Skirt IPR Estoppel

The U.S. Solicitor General recommended Tuesday that the United States Supreme Court deny Apple, Inc.’s petition asking the 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.”

The SG said in its amicus brief this week that Apple’s argument “lacks merit and does not warrant this Court’s review.” While the SG said the phrase “during that inter partes review” in Section 315(e)(2) does refer specifically to post-institution proceedings, Apple still “‘reasonably could have raised’ the patentability challenges at issue here during the instituted reviews.” The SG’s brief explains:

“To be sure, once Apple omitted those grounds from its petitions and the USPTO instituted reviews to consider other patentability challenges, petitioners’ opportunity to raise the disputed grounds in those reviews had effectively been lost. But in determining whether a person “reasonably could have” taken a particular action during a particular interval of time, it is appropriate to consider not only the options available to that person when the relevant interval commenced, but also whether the person could previously have taken preparatory steps that would have made additional options available.”

Since SAS Institute v. Iancu, said the SG, the Federal Circuit’s interpretation of Section 315(e)(2) in the underlying decision is the only one “gives effect to Congress’s intent that some grounds not raised during an instituted review can nevertheless trigger estoppel because the petitioner ‘reasonably could have raised’ them.”

SG Weighs in on Other IP Cases

The SG also filed briefs in two other IP cases on Tuesday. ML Genius Holdings LLC v. Google is a copyright case that asks the High Court to grant a petition on the question of whether the Copyright Act’s preemption clause allows a business “to invoke traditional state-law contract remedies to enforce a promise not to copy and use its content?”; and Nike, Inc. v. Adidas, AG. asks “[w]hether, in an inter partes review, the Board sua sponte may identify a reason why, on the existing record, a proposed substitute claim is potentially unpatentable and may decline to accept the substitute claim on that ground after giving the patent owner notice and an opportunity to respond.” The SG recommended denying the petitions in both cases.

The Nike v. Adidas petition arises from an IPR that was the subject of a recent Merit Systems Protection Board  decision  granting Patent Trial and Appeal Board (PTAB) Administrative Patent Judge (APJ) Michael Fitzpatrick’s request for corrective action with respect to alleged retaliatory personnel actions against him by senior management officials at the Department of Commerce and U.S. Patent and Trademark Office.