The Supreme Court has declined to step into a dispute over 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. This issue has been simmering since a precedential Federal Circuit decision last February that significantly expanded the reach of such estoppel: in Caltech v. Broadcom, it held 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 Court’s June 26 denial of a certiorari petition from codefendants Apple and Broadcom effectively upholds Caltech with respect to estoppel. Yet that decision is far from the last word on the issue: the Federal Circuit has since clarified other uncertainties with respect to estoppel that were not resolved in Caltech, while a USPTO rulemaking package proposed earlier this year floats even larger changes.

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.

The Federal Circuit has ruled that appellate review is available for USPTO decisions not to initiate reexaminations based on inter partes review (IPR) estoppel, which bars reexam requests by petitioners whose IPRs against the same claims have reached final written decisions. In Alarm.com v. Hirshfeld, the court held in a February 24 precedential decision that the Eastern District of Virginia was wrong to reject an Administrative Procedure Act (APA) lawsuit challenging a reexam denial on that basis. The Federal Circuit instead concluded, contrary to the district court, that the relevant statutory scheme does not preclude appeals of IPR estoppel decisions with respect to reexams. The decision comes less than a month after the Federal Circuit broadened the applicable standard for IPR estoppel as applied in district court—an already wider-reaching requirement than for reexams.

On February 4, the Federal Circuit vacated and remanded a $1.1B damages award against Apple and Broadcom in litigation filed by the California Institute of Technology (Caltech), also trimming the underlying infringement verdict. While the reversal of such a large damages verdict is notable on its own, the Federal Circuit’s decision was also significant due to its expansion of inter partes review (IPR) estoppel—the statutory requirement that restricts petitioners from raising certain IPR validity arguments in subsequent district court challenges. In Caltech, the Federal Circuit resolved a district court split over the application of that requirement by overruling its 2016 Shaw Industries Group v. Creel Automated Systems decision, now holding 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.

A divided Federal Circuit has reversed key portions of a Central District of California jury’s January 2020 verdict for the California Institute of Technology (Caltech) against Apple and Broadcom. In a February 4 precedential decision, a majority of the appellate court overturned the jury’s finding of infringement as to one of the three tried Wi-Fi networking patents and remanded for a new trial, ruling that the lower court erred by failing to instruct the jury on the proper construction of a key claim term. The majority also unwound the jury’s $1.1B damages award, concluding that the district court was wrong to allow a “legally erroneous” two-tiered damages theory that applied separate hypothetical negotiations to the sale of the same chips.

California Institute of Technology (Caltech) has added a case against Samsung (2:21-cv-00446) to the litigation campaign that saw a large infringement verdict against Apple and Broadcom in January of this year. The university again asserts the same five patents in suit against the other three defendants in active district court cases: Dell, HP, and Microsoft. Caltech targets Samsung over the provision of various “Wi-Fi products” (e.g., computers, refrigerators, smartphones, smart watches, tablets, TVs, etc.) that are compliant with certain Wi-Fi standards (802.11n, 802.11ac, and/or 802.11ax) and the 12 low-density parity-check (LDPC) error correction codes incorporated in those standards.

Late last week, California Institute of Technology (Caltech) filed three new complaints in the litigation campaign that resulted in an infringement verdict awarding $1.1B in damages—$837.8M against Apple and $270.2M against Broadcom—in January 2020. One of the complaints is original, asserting five patents against Microsoft (6:21-cv-00276), three tried to the California jury, one at issue in the early days of this campaign, and one new to the litigation. Caltech amended its complaints in November 2020 cases filed against Dell and HP such that all five error-correction coding patents are now asserted against each active defendant. The accused products throughout have been various computer products (e.g., laptops, tablets, thin clients, workstations, etc.) that comply with certain Wi-Fi standards (802.11n, 802.11ac, and/or 802.11ax), targeted for the 12 low-density parity-check (LDPC) codes incorporated in those standards.

At the end of October, another Texas jury returned a $500M-plus verdict in favor of VirnetX Inc. against Apple. While 2020 has not been all roses for patent plaintiffs—recall that a few weeks earlier, Roku won a noninfringement verdict in litigation filed by inventor-controlled NPE MV3 Partners LLC in District Judge Alan D. Albright’s first patent jury trial since he took the bench—the most recent VirnetX verdict does join a string of high-dollar awards in patent infringement cases this year.

As a January 2020 infringement verdict returned against Apple and Broadcom by a Central District of California jury is appealed to the Federal Circuit, California Institute of Technology (Caltech) has hit Dell (6:20-cv-01042) and HP (6:20-cv-01041), each with a Western District of Texas complaint. The same three patents earlier found infringed are again at issue, with Caltech suing Dell and HP over the provision of various computer products (e.g., laptops, tablets, thin clients, workstations, etc.) that comply with certain Wi-Fi standards (802.11n, 802.11ac, and/or 802.11ax), with the 12 low-density parity-check (LDPC) codes incorporated in those standards at issue.

District Judge George H. Wu has entered final judgment for California Institute of Technology (CalTech) and against Apple and Broadcom nearly eight months after a Central District of California jury returned a verdict that the two defendants had infringed several Wi-Fi networking patents held by CalTech. The jury reached its verdict after a two-week January 2020 trial, awarding CalTech more than $837M from Apple and more than $270 million from Broadcom, both under a running royalty theory. Despite entering judgment, the court has postponed deciding several issues until after an anticipated appeal.