“The petition is subject to Section 315(e)(E), which the Federal Circuit applies estoppel to grounds reasonably likely to have been raised in petitions filed before inter partes review commences. 2) claims to have dismissed its precedent by adopting a non-textual interpretation of .’
Yesterday, the U.S. Supreme Court asked the U.S. Attorney General to comment on Apple’s petition to the High Court to clarify the proper application of estoppel in inter partes review (IPR) proceedings.
The case stems from a February 2022 ruling by the Court of Appeals for the Federal Circuit (CAFC). Central California District. This ruling was granted by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively, “Broadcom”) and Apple Inc. by granting Caltech U.S. Patents 7,116,710 (the ‘710 patent), 7,421,032 ( ‘032 patent), and U.S. Patent 7,916,781 (‘781 patent).
As part of its decision, the Federal Circuit upheld the district court’s ruling barring the filing of an invalidity challenge based on known prior art after an IPR litigation.The court took advantage of the opportunity to dismiss Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. (Fed. Cir. 2016) And clarify that estoppel applies to claims and grounds that are not in the IPR but could reasonably be included in the petition.
Then, on February 22, 2022, the CAFC clarified in an errata: Claims not challenged in the petition are not subject to estoppel. “
Apple appealed to the Supreme Court in September 2022, stating in its petition that if the IPR of a patent claim reaches a final written determination, “Section 315(e)(2) would allow the petitioner to It prohibits challenging the validity of the patent’s claims.” District Court for “reasons which petitioner raised or could reasonably have raised during its inter partes review.” The petition was subject to § 315(e)(2), which the Federal Circuit applied estoppel to grounds reasonably likely to have been raised in petitions filed before inter partes review commenced. ), he claims to have dismissed his precedent by adopting a non-textual interpretation of . “
In its response, Caltech said the Federal Circuit’s interpretation of 35 USC § 315(e)(2) is consistent with the plain text and ordinary meaning of the law. The complaint further states that Apple’s attempt to portray the district court’s view that Apple could have reasonably asserted new grounds of I knew about it,” he said, so it was against the law. “An unnatural and implausible reading of the statute.” Adopting this construction would “limit estoppel to the grounds that the patent opponent actually included in the petition for inter partes examination,” Caltech added.
Two counsel briefs have also been filed with the Supreme Court, both in favor of petitioners. A brief letter filed on behalf of the patent law professor found that the Federal Circuit’s decision should be overturned and the court ruled that “after inter partes review (IPR) estoppel must be or could reasonably have been raised.” Party Review”
“During that inter partes review” means the period from initiation to final determination as provided in the statutory text. The summary adds that an overly broad interpretation of the law raises questions of fairness and complicates future proceedings by requiring a determination of what prior art petitioners should know at the time of filing. increase.
The Unified Patents opinion similarly leans toward Apple’s view that estoppel should apply only to the period of the final decision after commencement, and urges the court to “take serious consideration” of this argument. Ultimately, though urged, primarily “petitioners and patent owners have the final and conclusive interpretation of the estoppel clause.”
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Author: Alex Kopje
