In unrelated opinions published one week apart, the Court of Appeals for the Federal Circuit has pushed out the boundaries of IPR estoppel. IPR estoppel, like many patent law issues, seems esoteric, but it can have tremendous economic impact. Though estoppel is usually an issue of equity, well within a judge’s sense of fairness, IPR estoppel has a statutory basis and is therefore treated differently from equitable estoppel. The fairness principal dictates that a litigant should get only one bite at the apple. In an IPR, a party has an opportunity to challenge a patent’s validity under favorable conditions within the US Patent & Trademark Office. IPR is a bite at the validity apple. If you take that bite, under IPR estoppel you lose the opportunity to try to invalidate the patent again.

IPR = inter partes review, was introduced in 2011 as part of the America Invents Act, which itself was part of a patent reform movement largely reacting to the business of patent trolls. IPR is a proceeding within the USPTO. The only issue is whether the claims of the patent are invalid in view of prior art cited by the petitioner. The proceeding is adversarial — between a petitioner (which can be anyone) and the patent owner, and held before a three-judge panel of administrative law judges. Because of the high rate of invalidation of patents in IPR compared to the courts, IPR has been characterized as the place where patents go to die. On the other hand, if the patent survives IPR, it’s supposed to be a “super-patent” — nearly impossible to invalidate. 

In our SoCal IP Institute meeting on February 28, 2022 (we are dark on Presidents Day), we’ll first discuss the prior state of the case law, which many viewed as unfairly limiting IPR estoppel to the point that it was irrelevant. Second, we’ll address the holdings of the first case, California Inst. of Tech. v. Broadcom Ltd., — F.4th —, 2022 WL 333669 (Fed. Cir. Feb. 4, 2022), revised (Feb. 22, 2022) (this revision is important). Third, we’ll discuss the holdings of the second case, Intuitive Surgical, Inc. v. Ethicon LLC, — F.4th —, 2022 WL 414252 (Fed. Cir. Feb. 11, 2022). These were both big cases over huge amounts of money between very well funded litigants. Both cases addressed numerous issues, but we are going to focus on IPR estoppel. In both, the Court of Appeals for the Federal Circuit emphasized that the statute provides for a fairly wide scope of IPR estoppel. Last, we’ll discuss some possible conflicts between the CalTech and Intuitive decisions, and where the courts are probably heading.

IPR has two phases: an institution phase and a trial phase. IPR estoppel applies only if the petitioner wins at the institution phase, but the patent owner wins at the trial phase. The trial phase typically ends with a “final written decision” determining whether to cancel the patent’s claims. Once the final written decision issues, IPR estoppel applies and therefore limits the IPR petitioner and certain others from trying to invalidate the patent either in another IPR, in the courts or before the International Trade Commission.

The CalTech and Intuitive decisions address key language in the statute, 35 U.S.C. 315(e): 

  • What “claim” is protected from IPR estoppel? Is it all claims of the patent, or only those subject of the IPR? (Editor note: What about related patents?)
  • The statute refers to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” What is meant by “any” and “reasonably could have?”

SoCal IP Law Group partner Steve Sereboff will lead the discussion. Steve has particular interest in IPR estoppel, having won numerous IPRs, including a published decision from the Court of Appeals for the Federal Circuit and a precedential decision of the Patent Trial and Appeal Board written by the Chief Judge. Both of these decisions related to the issue of “real party in interest,” which is closely related to IPR estoppel.