Federal Circuit Further Clarifies IPR Estoppel in California Institute of Technology v. Broadcom Limited
Knowledge

Federal Circuit Further Clarifies IPR Estoppel in California Institute of Technology v. Broadcom Limited

Key Takeaways

  • Inter partes review (IPR) estoppel applies to all invalidity grounds that were and could have been reasonably asserted against the claims challenged in the IPR petition.

  • Parties should decide whether to forego challenging certain claims at the Patent Trial and Appeal Board (PTAB) to maximize the chance of success for certain invalidity arguments at the district court.

On February 22, 2022, the Federal Circuit issued an errata in California Institute of Technology v. Broadcom Limited, et al., 20-2222 (Fed. Cir. 2022). For background information about the case, please refer to our previous client alert issued on February 17, 2022.

In its original opinion, the federal circuit stated that IPR estoppel applied to all claims and grounds, not in the IPR but which reasonably could have been included. Through the errata, the federal circuit changed the language to “all grounds” and eliminated “all claims.”  Further, the language in the majority opinion stating, “In a regime in which the Board must institute on all grounds asserted…,” the language “grounds asserted” was changed to “challenged claims.” Thus, the federal circuit clarified that IPR estoppel applies to the challenged claims and to all grounds that reasonably could have been asserted.

This errata, while clarifying the scope of IPR, again highlights the fact that accused infringers must exercise caution before filing an IPR petition. They must be mindful when choosing the specific claims to challenge and determine the grounds to invalidate the challenged claims before filing the IPR. Otherwise, they will be unable to raise invalidity arguments against the claims challenged at the PTAB in subsequent district court litigation. Accused infringers may find that there is greater strategic value in asserting invalidity arguments against certain claims at the district court; if that is the case, such claims should not be included in the IPR petition.

Ultimately, the errata, much like the original decision, highlights how crucial it is for universities to conduct thorough and exhaustive due diligence before deciding to enforce or invalidate certain patents. Failing to obtain a complete understanding of the relevant patents and an all-encompassing litigation strategy could prevent parties from making successful arguments.

If you have any questions about how these changes affect your university, please contact: