315(e)(2) estoppel correction, Errata dated 2/22/2022

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RICK NEIFELD

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Feb 23, 2022, 10:31:06 AMFeb 23
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The Federal Circuit issued an Errata to the 2/4/2022 opinion noted below, which limits the scope of estoppel indicated in the 2/4/2022 opinion.  But the Errata refers to snippets by page and line, instead of clearly showing the actual change. Copied in below is my side by side comparison.

 

 

Rick

 

 

 

 

From: RICK NEIFELD
Sent: Tuesday, February 08, 2022 12:45 PM
To: Rick's List-Serve (pate...@googlegroups.com) <pate...@googlegroups.com>
Subject: 315(e)(2) estoppel expanded to all claims and all grounds that reasonably could have been included in the petition

 

            California Institute of Technology v. Broadcom Limited, 2020-2222, 2021-1527 (Fed. Cir. 2/4/2022).

          This is a decision on appeals from the C.D. Cal district court case 2:16-cv-03714-GWAGR. The district court entered a decision adverse to Broadcom in a patent infringement civil action. Broadcom appealed.

 

The Federal Circuit, inter alia, affirmed the district court’s summary judgment finding of no invalidity based on IPR estoppel.

 

          Legal Issue: 35 USC 315(e)(2), “The petitioner ... may not assert ... that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review,” meaning of “claim”; “could have been raised during”; scope of IPR estoppel.

          The Federal Circuit overruled prior precedent, holding that IPR estoppel applies to “all claims and grounds ... which reasonably could have been included in the petition.”

 

...Thus, the Supreme Court’s later decision in SAS makes clear that Shaw, while perhaps correct at the time in light of our pre-SAS interpretation of the statute cannot be sustained under the Supreme Court’s interpretation of related statutory provisions in SAS. The panel here has the authority to overrule Shaw in light of SAS, without en banc action. *** 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 in the IPR but which reasonably could have been included in the petition. [California Institute of Technology v. Broadcom Limited, 2020-2222, 2021-1527 (Fed. Cir. 2/4/2022).]

 

 

Best regards, Rick Neifeld, Ph.D., Patent Attorney

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