Supreme Court Seeks Government’s Views on Ruling that Broadened IPR Estoppel

  • January 20, 2023
  • Category: Patent Litigation Feature

The US Supreme Court has asked for the government’s take on a closely watched appeal tackling the proper scope of inter partes review (IPR) estoppel, which bars (or estops) a defendant from raising certain IPR validity arguments in subsequent district court challenges. Last February, the Federal Circuit held in Caltech v. Apple and Broadcom that a petitioner is estopped not just from later asserting arguments actually raised in a successful petition, but also from including those arguments that they “reasonably could have” included. The defendants challenged that decision in September, arguing that by overruling its 2016 Shaw Industries Group v. Creel Automated Systems opinion—resolving a district court split over the application of IPR estoppel—the Federal Circuit had adopted an “atextual” and overly broad view of the governing statute. On January 17, the Supreme Court issued a Call for the Views of the Solicitor General, Elizabeth Prelogar, in that appeal, indicating that the Court may be closely scrutinizing the case. Meanwhile, the parties have continued to debate the merits of the Federal Circuit’s decision, with one amicus filing a brief in support of the petitioners.

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