Estoppel Reasonably Could Have Raised During Trial?

The challenge to the IPR estoppel statute in Apple et al., v. California Institute of Technology focused on the statute’s use of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding as stated in the statute.

While the Court passed on the question today, its reasoning could be in conflict with contrary Federal Circuit precedent.

The cert petition (here), characterized this argument 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.”

As previously reported, the Court sought the input of the Solicitor General this past January on the debate. The SG’s Brief argued that prior art can still be raised during review, and that as such, this debate was irrelevant.

The SG’s position is at least theoretically accurate. In other words, while art outside of the ground of the petition might be added during trial to corroborate a petition position, or even introduced as supplemental information (albeit highly unlikely), it certainly cannot be added as a new or alternative trial ground.

While it is only speculation as to why the Court ultimately passed on the estoppel dispute, presumably, this argument held at least some sway given the invitation to the SG for input. But, if this was at least part of the rationale, it seems at odds with Federal Circuit precedent on joinder estoppel.

In the joinder scenario, the Federal Federal Circuit held the exact opposite. In that case, the Court explained that:

[A]ccording to [§ 315(e)], a party is only estopped from challenging claims in the final written decision based on grounds that it “raised or reasonably could have raised” during the IPR. Because a joining party cannot bring with it grounds other than those already instituted, that party is not statutorily estopped from raising other invalidity grounds.

I could imagine the SG arguing here that, for the same reasons, the Federal Circuit’s position is inaccurate. That is, theoretically speaking, the joinder petitioner would have the same trial options. Of course, practically speaking, a joined party is purely an understudy.

I am guessing we have not heard the last of the joinder estoppel debate given today’s development.