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

Skip to first unread message


Feb 23, 2022, 10:31:06 AMFeb 23
to Rick's List-Serve (patentlaw@googlegroups.com)

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.








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

Neifeld IP Law PLLC

9112 Shearman Street, Fairfax VA 22032-1479, United States

Mobile/Office: 7034150012

Fax: 15712810045



My Patent Lawyer Zoominars, Signup

My digital work, Law Regarding Patents

My Vcard (vcf file)



Reply all
Reply to author
0 new messages