Yesterday, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed in part a district court ruling that found video game company Valve willfully infringed Ironburg’s U.S. Patent No. 8,641,525. However, the CAFC judges ruled that the district court erred when it estopped Valve from raising several grounds that were not the subject of its partially-instituted inter partes review (IPR) petition against Ironburg. Judge Clevenger dissented. A jury levied Valve with $4 million in damages, a sum that Ironburg argued should be enhanced. The district court did not grant enhanced damages, found that the two challenged claim terms were not indefinite, said the claims were willfully infringed, held that Valve was estopped from litigating the prior art grounds on which IPR was requested but not instituted, and also held that Valve was estopped from litigating later-discovered invalidity grounds. The CAFC affirmed all but the latter holding, explaining that the later-discovered prior art that was not part of the IPR petition must be held to a “skilled searcher” standard that it is the burden of the patent holder to prove is subject to IPR estoppel.
On March 9, e-commerce company Ingenio Inc. filed a petition for writ of certiorari with the U.S. Supreme Court asking it to take up an appeal of a decision last August by the U.S. Court of Appeals for the Federal Circuit in favor of patent owner Click-to-Call Technologies. Ingenio’s petition asks the Supreme Court to overturn the Federal Circuit’s ruling that Ingenio was estopped from challenging the validity of patent claims that were denied institution during inter partes review (IPR) validity proceedings at the Patent Trial and Appeal Board.
The U.S. Supreme Court yesterday invited the U.S. Solicitor General to provide its views on Apple’s petition asking the High Court to clarify the proper application of estoppel in inter partes review (IPR) proceedings. The case stems from a February, 2022, decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which the court issued a mixed precedential decision that affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California. That ruling related to a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc.
U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal on August 22 issued a decision granting sua sponte Director Review and Affirming the Decision on Institution in Zynga Inc. v. IGT, IPR2022-00199, U.S. Patent No. 7,168,089 B2. Vidal determined that the interference estoppel provision of 37 C.F.R. § 41.127(a)(1) does not apply to trial and preliminary proceedings before the Patent Trial and Appeal Board (PTAB) and the PTAB was correct in holding that Petitioner should not be barred from pursuing inter partes review based on interference estoppel.
On August 17, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Click-to-Call Technologies LP v. Ingenio, Inc. finding in part that, as a matter of law, Ingenio was estopped from challenging the validity of a patent claim on grounds it could have reasonably challenged during inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Although the impact of this precedential holding will likely be limited due to the “unusual procedural posture” of this case, which involves a partial IPR institution prior to the U.S. Supreme Court’s 2018 ruling in SAS Institute, the Federal Circuit’s decision does underscore the circuitous nature of PTAB proceedings that often add many years to patent lawsuits filed in U.S. district court.