315(e)(2) estoppel expanded to all claims and all grounds that reasonably could have been included in the petition

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RICK NEIFELD

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Feb 8, 2022, 12:44:35 PMFeb 8
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            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).]

 

 

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RICK NEIFELD

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Feb 8, 2022, 3:19:26 PMFeb 8
to Trujillo, Doreen Y., Rick's List-Serve (patentlaw@googlegroups.com)

Thanks Doreen.  I list that point of law in the Stare Decisis section of my book, in a subsection "Stare decisis, reviewing court is not bound by prior decision, when the court of last resort undercut the theory or reasoning underlying the prior decision in such a way that the cases are clearly irreconcilable"

 

(There was also the minor point of law about the evidence that would be required to support different reasonable royalty rates for different infringers at different levels of the supply chain.)

 

Rick

 

 

 

From: Trujillo, Doreen Y. [mailto:Doreen....@saul.com]
Sent: Tuesday, February 08, 2022 2:11 PM
To: RICK NEIFELD <rnei...@neifeld.com>; Rick's List-Serve (pate...@googlegroups.com) <pate...@googlegroups.com>
Subject: RE: 315(e)(2) estoppel expanded to all claims and all grounds that reasonably could have been included in the petition

 

 

Notably, a panel of the Federal Circuit overruled the precedent of another panel. The panel explained why they were able to do so.

 

“The panel here has the authority to overrule Shaw in light of SAS, without en banc action. To be sure, SAS did not explicitly overrule Shaw or address the scope of statutory estoppel under § 315(e)(2). But the reasoning of Shaw rests on the assumption that the Board need not institute on all grounds, an assumption that SAS rejected. Even in the Ninth Circuit, which has one of the stricter approaches to panel overruling, see Henry J. Dickman, Conflicts of Precedent, 106 Va. L. Rev. 1345, 1350–51 (2020), “the issues decided by the higher court need not be identical in order to be controlling. Rather, the relevant court of last resort must have undercut the theory or reasoning underlying the prior circuit precedent in such a way that the cases are clearly irreconcilable,” Miller v. Gammie, 335 F.3d 889, 900 (9th Cir. 2003) (en banc). We approved that higher standard in Troy v. Samson Manufacturing Corp., 758 F.3d 1322, 1326 (Fed. Cir. 2014), and conclude that

that standard is satisfied in this case.“

 

Doreen

 

Doreen Y. Trujillo 

SAUL EWING ARNSTEIN & LEHR LLP

1200 Liberty Ridge, Suite 200 | Wayne, PA 19087-5569

Tel: 610.251.5092 | Fax: 610.251.1407

Doreen....@saul.com | www.saul.com

 

 

From: pate...@googlegroups.com <pate...@googlegroups.com> On Behalf Of RICK NEIFELD
Sent: Tuesday, February 8, 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

 

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