Federal Circuit Report
| Publication year | 2022 |
| Author | Philip Eklem |
Philip Eklem
Reichman Jorgensen Lehman & Feldberg LLP
This article discusses the Federal Circuit's opinion in California Institute of Technology v. Broadcom et al. ("Caltech")1 and the case's impact on proceedings at the U.S.P.T.O. with parallel district-court litigation. Overruling Shaw Industries Group, Inc. v. Automated Creel Systems, Inc.,2 the three-judge panel held that estoppel under 35 U.S.C. § 315(e)(2), which precludes petitioners in inter partes review (IPR) proceedings that result in a final written decision from raising invalidity grounds in a civil proceeding that it "raised or reasonably could have raised" in the IPR, applies not only to the grounds upon which review was instituted, but also to grounds not stated in the petition.
The California Institute of Technology ("Caltech") sued Broadcom and Apple in the Central District of California on May 26, 2016, alleging infringement of four patents: U.S. Patent Nos. 7,116,710 (the "'710 patent"), 7,421,032, (the "'032 patent"), 7,916,781 (the "'781 patent"), and 8,284,833 (the "'833 patent").3 Broadcom and Apple asserted counterclaims for declaratory judgement of noninfringement and, among other things, invalidity of the asserted patents under 35 U.S.C. §§ 101, 102, 103, and/or 112.4
Apple filed ten petitions for inter partes review,5 cumulatively challenging every claim of each of Caltech's asserted patents.6 The Patent Trial and Appeal Board ("Board") instituted inter partes review based on all but one of Apple's petitions against the '710, '032, and '781 patents, and those proceedings resulted in final written decisions; however, the Board denied institution as to each of Apple's petitions against the '833 patent.7
After the Board issued final written decisions in many of the IPR proceedings, Caltech moved for summary judgement of no invalidity with respect to the asserted claims of the '032 and '781 patents,8 arguing that Broadcom and Apple were estopped under 35 U.S.C. § 315(e) (2) from asserting prior art invalidity challenges based on grounds that Apple "raised or reasonably could have raised" in the IPR petitions.9
Caltech argued that Broadcom and Apple should be estopped from maintaining invalidity challenges based on numerous grounds, including (a) some of the exact same grounds raised in the IPR petitions, as well as (b) other grounds not raised in the IPR petitions that were based on references Broadcom and Apple "reasonably could have raised" in their
[Page 52]
IPR petitions because they were aware of them before filing the petitions.10 Recognizing that the Federal Circuit previously held in Shaw that estoppel under § 315(e) applied only to grounds upon which the Board institutes inter partes review—and that the Board did not institute review based on Apple's non-petitioned grounds—Caltech argued that the Supreme Court's decision in SAS Institute Inc. v. Iancu11 "implicitly overruled" Shaw and its progeny.12 Caltech argued that because the holding in Shaw arose from a situation in which the non-estopped grounds were raised in the IPR petition (referred to here as "non-instituted" grounds) at a time when the Board's practices permitted instituting review on fewer than all grounds asserted in the petition, and because the Supreme Court's holding in SAS forbids that type of partial institution practice (and requires the Board to institute on all petitioned grounds), the only type of grounds that a petitioner "reasonably could have raised" (as distinct from grounds that it "raised") are grounds it did not include in the petition (referred to here as "non-petitioned" grounds).13
Broadcom and Apple opposed the motion, arguing that Caltech was "wrong" about Shaw being "implicitly overruled" by SAS and that "Caltech identifies no authority to support its contention Shaw has been 'overruled.'"14 Broadcom and Apple maintained that the buck stops with Shaw, in which "the Federal Circuit ruled that estoppel under 35 U.S.C. § 315(e) only applies to those grounds actually raised during the IPR, and does not extend to grounds not presented by the petitioner."15
The district court granted Caltech's motion with respect to many of the non-petitioned grounds identified in Caltech's motion for summary judgment,16 holding that Broadcom and Apple were estopped under § 315(e)(2) from asserting them.17 In rendering its decision, the district court analyzed Shaw and its underlying facts, as well as pre-SAS cases that analyze the impact of Shaw on non-petitioned grounds. The district court found persuasive the analysis of Shaw in Milwaukee Electric Tool Corp. v. Snap-On Inc.18 and Oil-Dri Corp. of America v. Nestle Purina Petcare Co.,19 which determined that (1) a "non-instituted" ground is not subject to estoppel, whatever the reason for its rejection (i.e., whether for procedural reasons or on the merits), and (2) because Shaw touched on "non-instituted" grounds only, the Federal Circuit had not yet expressly addressed whether IPR estoppel can apply to non-petitioned grounds.20
The court further reasoned that because SAS forbids the type of partial-institution scenario that gave rise to the facts in Shaw, and because the Federal Circuit has since interpreted SAS as requiring an "all-or-nothing" approach to instituting petitioned grounds, the facts underlying Shaw are unlikely to arise again.21 "The result," concluded the court, "is that the choices of the petitioner—and the petitioner alone—in its initial decision regarding...
To continue reading
Request your trial