Scope of Estoppel Considered for Review

IPR estoppel is defined by 35 U.S.C. 315(e). The statute recites in relevant part that any claim subject to a failed IPR may not be argued by that petitioner in an infringement action as “invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 315(e)(2)

While there has been much debate in the lower courts as to the scope of “reasonably could have raised,” and even “ground,” the debate currently before the SCOTUS in Apple et al., v. California Institute of Technology turns on the meaning of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding. If estoppel is determined at the outset of petition drafting that scope is far broader than what could be added to an ongoing IPR proceeding (i.e., next to nothing).

Should this question ultimately taken up, the outcome could have significant consequences.

The cert petition (here) in Apple was filed in September of last year. This week, the Court sought the further input of the Solicitor General on this estoppel question, which is framed as:

Whether the Federal Circuit erroneously extended IPR estoppel under 35 U.S.C. § 315(e)(2) to all grounds that reasonably could have been raised in the petition filed before an inter partes review is instituted, even though the text of the statute applies estoppel only to
grounds that “reasonably could have [been] raised during that inter partes review.”

While the requested input from the SG does not necessarily equate to granting of cert, it is a tantalizing development that indicates at least some further interest in the issue.

Should the Federal Circuit’s view of estoppel be overruled, the estoppel footprint for AIA trials would shrink considerably. For example, PGR proceedings are considered to be far less attractive than IPR given the potential for a larger estoppel footprint at the time of petition filing (i.e., could have raised 112, 101, 102, and 103). If estoppel assessment were to be reset to what could be added during trial, PGR estoppel would be no more onerous than IPR.

This case is one to watch in 2023.