Federal Circuit Issues Errata: IPR Estoppel Applies Only to Challenged Claims

By on March 3, 2022
Posted In Patents

The US Court of Appeals for the Federal Circuit issued an errata to its opinion in California Institute of Technology v. Broadcom Limited, clarifying that inter partes review (IPR) estoppel under 35 USC § 315(e) does not apply to unasserted claims. California Institute of Technology v. Broadcom Limited, Case Nos. 20-2222; 21-1527 (Fed. Cir. Feb. 22, 2022).

In its original opinion, the Court stated that estoppel applies “to all claims and grounds not stated in the IPR but which reasonably could have been included in the petition” (emphasis added). The “claims” portion of this statement appeared to be at odds with the scope of § 315(e), which only applies to patent claims subject to a final written decision (i.e., it does not apply to patent claims that were not subject to the IPR proceeding). To quell any confusion, the Court modified its opinion by deleting the term “claims” from the statement. The Court also made this point clear in its follow-on IPR estoppel decision in Intuitive Surgical, Inc. v. Ethicon LLC, in which the Court advised that a petitioner could file separate petitions on a claim-by-claim basis to avoid § 315(e)(1) estoppel.

The full change to the Court’s Caltech opinion is as follows:

Accordingly, we take this opportunity to overrule Shaw and clarify that estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all claims and grounds not stated in the IPR petition but which reasonably could have been included in the petition asserted. In a regime in which the Board must institute on all grounds asserted challenged claims and the petition defines the IPR litigation, this interpretation is the only plausible reading of “reasonably could have been raised” and “in the IPR” that gives any meaning to those words.

Paul Devinsky
Paul Devinsky advises clients on patent, trademark and trademark litigation and counseling, as well as copyright counseling. He is also active in intellectual property (IP) licensing, transactions and due diligence, as well as post-issuance US Patent and Trademark Office (USPTO) proceedings such as reissues and inter partes review, covered business method patent review and post grant review, and appellate (Federal Circuit) advocacy. Read Paul Devinsky's full bio.