by Dennis Crouch
The Supreme Courtroom has added a fourth case to its checklist of potentials for 2023: Apple Inc., v. California Institute of Know-how, Docket No. 22-203. The case is extraordinarily essential for our patent system as a result of it may outline key elements of the interaction between inter partes overview (IPR) proceedings and parallel district court docket litigation.
IPR Estoppel Provision: In conventional patent infringement litigation, accused infringers nearly all the time increase invalidity defenses — arguing that the patent fails to fulfill the situations of patentability set forth within the Patent Act. For the previous decade, IPRs have supplied an extra highly effective device to problem validity. Because the IPR system was being developed, patent holders had been involved about repeat harassment and argued that patent challengers needs to be required to decide on their battleground: both the PTAB or Courtroom, not each. Elements of the eventual compromise are codified within the estoppel provision of 35 U.S.C. 315(e)(2). The statute turns into efficient as soon as an IPR reaches a remaining written choice as to some declare within the challenged patent. At that time, the IPR petitioner is prohibited from asserting in court docket that any challenged declare is “invalid on any floor that the petitioner raised or moderately may have raised throughout that inter partes overview.” Id. The query within the case is statutory interpretation – what did Congress imply by “may have raised throughout that inter partes overview”?
Apple misplaced its IPR towards CalTech’s patent and subsequently tried to keep up additional obviousness arguments within the parallel infringement litigation. The district and appellate courts utilized 315(e)(2) estoppel to ban these further obviousness arguments — concluding that Apple moderately may have raised them in its preliminary IPR petition. Apple’s enchantment to the Supreme Courtroom argues that the Federal Circuit misconstrued the statute. Apple’s argument hinges on three key factors:
- The statutory estoppel applies solely to grounds that would have been raised “throughout” the IPR;
- The IPR begins solely on the level the place the PTAB grants the petition to institute an IPR; and
- As soon as the IPR is instituted, the petitioner is barred from elevating new grounds (apart from rebuttal-type points).
The Federal Circuit’s error (in response to Apple) is that the court docket discovered that estoppel applies to any floor that would have been raised within the petition. However, the petition is pre-IPR and thus not “throughout” the IPR because the statute requires. The petition for writ of certiorari asks the next query:
Whether or not the Federal Circuit erroneously prolonged IPR estoppel below 35 U.S.C. § 315(e)(2) to all grounds that moderately may have been raised within the petition filed earlier than an inter partes overview is instituted, though the textual content of the statute applies estoppel solely to grounds that “moderately may have [been] raised throughout that inter partes overview.”
What’s the information: The Supreme Courtroom has issued a CVSG – Name for the Views of the Solicitor Common – within the case. What this implies is that no less than 4 justices suppose that case has potential however that they want to hear the Biden Administration’s views on whether or not that is an applicable car. The SG’s workplace is already engaged on three different briefs. Two deal with eligibility (Interactive Wearables & Tropp), and the opposite addresses the PTO-FDA interplay involving skinny-label infringement (Teva v. GSK).
My view on the estoppel problem:
- Level for CalTech: The Federal Circuit’s resolution right here is the higher coverage. Events shouldn’t be given repeated affirmative alternatives to try invalidation of the identical patent claims. Quite, the method ought to observe the final use-it-or-lose-it rule of litigation that forces events to carry their finest arguments to the desk and see if they’re ok. Right here, Apple made a strategic choice to carry sure arguments to the PTAB — probably as a result of they had been the most effective arguments. It doesn’t assist anybody to now allow them to carry on the third-string as a measure of patent invalidity.
- Level for Apple: A pure textual studying of the statute favors Apple. If the IPR doesn’t begin till initiated, “throughout” the IPR wouldn’t embody any petition-stage actions.
- Match for CalTech: Apple’s studying removes basically all which means from the “moderately may have raised” provision since petitioners mainly can’t add any new grounds as soon as the petition is granted. The statute’s goal although was to forestall abusive and serial patent challenges.
I all the time hope that the Supreme Courtroom takes patent instances due to each the drama and potential for significant and constructive reform. Likewise, I hope that the court docket takes this case, however then affirms.