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Caltech v. Broadcom: IPR Is One Shot

Federal Circuit, decided 4 February 2022. Read from the opinion; quotations verified against the court's text.

Read this with Ingenico v. IOENGINE. This case creates a broad forfeiture. Ingenico draws its boundary. Read alone, this one says IPR is a trap, which overstates it and could push a reader away from a proceeding that is often the right choice.
Holding

On February 4, 2022 the Federal Circuit overruled its earlier Shaw decision and held that estoppel from an inter partes review "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."

When a company challenges a patent at the Patent Office through inter partes review and loses, a statute bars it from re-running certain arguments in court. For years the boundary of that bar was narrow, because of a decision called Shaw.

The Federal Circuit overruled Shaw here and drew the line much wider: you are estopped from every claim and ground you reasonably could have included in your petition, whether or not you did.

The practical effect is that the petition is a single, final opportunity to raise every patent and printed-publication argument, and the search behind it has to be finished before you file.

What This Case Is Not

"IPR is now dangerous" overstates this. Presented without Ingenico, this case pushes readers away from a proceeding that is frequently the right choice. The pair, not this case alone, is the accurate picture of what estoppel actually reaches.
  • It does not make inter partes review a bad option. It changes when the prior-art search has to be finished.
  • It does not estop grounds an IPR could never have reached. That is the Ingenico half.
  • It does not tell you whether a particular ground reasonably could have been included. That is a legal judgment on the actual petition.

Educational, not legal advice. Litigation strategy and exposure are determinations for counsel with the actual facts.

Sources