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

“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.” – Solicitor General

Solicitor GeneralThe 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.



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Join the Discussion

10 comments so far.

  • [Avatar for Alan]
    June 26, 2023 06:57 pm

    Cert was denied by SCOTUS today. Good for innovators, bad for Big Tech.

  • [Avatar for small inventor]
    small inventor
    May 30, 2023 01:51 pm

    Directive 10-289 immediately and be done with this nonsense called “US Patent System”

  • [Avatar for Anon]
    May 28, 2023 11:04 am

    direct some of the fees collected by the USPTO to counterproductive and ill-advised pet DEI programs aimed at increasing the diversity of inventors and the patent bar.

    Already there — without needing Congress to expressly designate.

    FAR too many too willing to join virtue-signaling without understanding the foundational philosophical aspects of identity politics involved while NOT acting to reverse the degradation of the power of the basket of legal rights of a granted patent (regardless of ANY ‘ism’ of identity of ANY inventor.

  • [Avatar for F22strike]
    May 26, 2023 06:11 pm

    Josh –

    When the inevitable decline in U.S. patent application filings and maintenance of U.S. patents becomes significant, the USPTO will continue to raise prosecution, maintenance, and IPR fees to make up for the decline in revenues. This will only accelerate the decline.

    Congress will direct some of the fees collected by the USPTO to counterproductive and ill-advised pet DEI programs aimed at increasing the diversity of inventors and the patent bar.

    Apple, Microsoft, Google, Meta, and Amazon, along with other members of the big-tech cabal, will continue to lobby Congress to ensure that no fix of the broken U.S. patent system is enacted.

    The incentive of exclusive rights in return for advancing the arts and elevating the living standard of our society as a whole was wisely envisioned by our founding fathers and enshrined in the U.S. Constitution. Sadly, this incentive has effectively been extinguished by Congress, the SCOTUS and the USPTO.

  • [Avatar for Josh Malone]
    Josh Malone
    May 26, 2023 04:04 pm

    F22 Strike, how will USPTO and Congress react when the inventor boycott reaches critical mass?

  • [Avatar for F22strike]
    May 26, 2023 12:04 pm

    The Caltech v. Broadcom, Apple, et al. litigation is proof positive that it is nearly impossible to enforce a U.S. patent. After seven years of court litigation and 17 IPR proceedings in the USPTO against the patents in suit, and after probably incurring well over ten of million dollars in legal fees, Caltech has yet to collect a single dollar in royalties as damages in this case. The patents in suit cover ground-breaking advances in error correction that are used in most Wi Fi systems around the world.

    The litigation has recently worsened for Caltech. The case was remanded to the district court after the CAFC’s decision for a re-trial on damages. Apple has recently raised a standing defense for the first time and requested summary judgment. Apple claims that due to certain licensing arrangements Caltech does not have standing to sue for damages. Most lawyers would think that this standing defense was waived prior to the original trial at the latest. It is inconceivable that the facts surrounding Caltech’s license arrangements could not have been discovered by Apple through the exercise of reasonable diligence prior to the original trial.

    Nonetheless, in a minute order dated May 1, 2023 the district court judge stated that the court would defer ruling on the Defendants’ summary judgment motion and set an evidentiary hearing concerning constitutional standing.

    Unless and until IPRs are effectively limited by amendments to the AIA, the damaging anti-patent decisions of the SCOTUS are overruled by Congress, and the USPTO is reformed (to remove that which in my opinion is serious corruption), it is a complete waste of a client’s time and money to file and prosecute U.S. patent applications except in very rare circumstances. The thicket of thirty patents protecting the highly profitable OZEMPIC pharmaceutical would be an example of one exception.

    The definition of insanity clearly applies to companies seeking to protect and capitalize on the results of their R &D in most cases. They foolishly keep filing U.S. patent applications somehow expecting a different result from what Caltech and many other companies have experienced since the catastrophic enactment of the AIA.

  • [Avatar for Pro Say]
    Pro Say
    May 26, 2023 10:44 am

    What Josh said.

    Big Tech — including of course Apple — have been gaming the PTAB / Court interplay since the birth of the Death Squad.

    In direct contravention of the clear intent of Congress.

    How much longer is Congress going to let Big Tech get away with it?

  • [Avatar for Josh Malone]
    Josh Malone
    May 26, 2023 09:22 am

    I really don’t like the loophole in the Federal Circuit opinion, “It is undisputed that Apple and Broadcom were aware of the prior art references that they sought to raise in the district court when Apple filed its IPR petitions.”

    Infringers have been arguing in court by substituting one piece of prior art of record with an uncited reference that is cumulative of all the others. Then they say “we weren’t aware of it”. This too is unfair as they have extremely powerful search capabilities and unlimited resources, and should chose the best prior art for the PTAB. They should never be permitted to bring an obviousness challenge against the same claims they previously challenged at PTAB.

  • [Avatar for Josh Malone]
    Josh Malone
    May 26, 2023 09:17 am

    Apple and their hitman Bill Lee are out of line, again. They’ve been carrying on this argument for years that they get multiple attacks against a patent at the PTAB and another attack in district court, in direct violation of the statute (and clear Congressional intent).

  • [Avatar for Alan]
    May 25, 2023 03:11 pm

    This is good news (as applied to the Apple cert petition). This should provide even less incentive for the Supreme Court to grant cert for this case.