On December 28, 2018, the Court in The California Institute of Technology v. Broadcom Limited et al., Case No. 2:16-cv-03714-GW-(AGRx), issued a Final Ruling on Plaintiff’s Motion for Partial Summary Judgment of Validity under 35 U.S.C. § 103 based on IPR Estoppel under 35 U.S.C. § 315(e)(2). In the case, Plaintiff The California Institute of Technology alleges patent infringement against Defendants Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, and Apple Inc. based on infringement from fifteen claims from three of its patents: (1) U.S. Patent No. 7,116,710 (“the ’710 Patent”); (2) U.S. Patent No. 7,421,032 (“the ’032 Patent”); and (3) U.S. Patent No. 7,916,781 (“the ’781 Patent”) (collectively, the “Asserted Patents”).
Plaintiff moved for partial summary judgment of no invalidity as to Claims 13 and 22 of the ’781 Patent and Claims 11 and 18 of the ’032 Patent, arguing that IPR estoppel precluded Defendants from raising each invalidity ground that was identified in Defendants’ invalidity contentions as to each of those claims in prior filed IPRs. Section 315(e)(2) of the Patent Act states: “The petitioner in an inter partes review [IPR] of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of 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.” Here, the Court had to consider whether the statutory IPR estoppel provision reaches to invalidity grounds that a petitioner was aware of at the time it filed its IPR petition, but chose not to bring in the IPR proceeding.
The Defendants argued that if a prior art reference is included in an IPR petition and IPR is not instituted as to that prior art reference, the reference could not have been reasonably raised during IPR. However, the Court reasoned that the “during IPR” language also should not be read in a vacuum. The full phrase of § 315(e)(2) is whether the ground is one “that the petitioner raised or reasonably could have raised during that inter partes review.” There is no reasonable basis by which a petitioner could raise a ground that has been explicitly rejected by the PTAB in making an IPR institution determination. But in the context of non-petitioned grounds, the issue goes back to the choices made by the petitioner itself. In other words, prior art references that a petitioner reasonably could have raised, but chose not to raise, in an IPR petition are also prior art references that reasonably could have been raised during actual IPR had the PTAB been given the opportunity (based on the petitioner’s raising them) to consider those references.
The choices of the petitioner – and the petitioner alone – in its initial decision regarding what grounds to bring before the PTAB dictate what grounds are raised (or reasonably could have been raised) “during IPR” and thus could result in estoppel if IPR results in a final written decision. Thus, the Court found that statutory IPR estoppel applies to invalidity grounds that a petitioner “reasonably could have raised” in its IPR petition, which includes prior art that a “‘skilled searcher conducting a diligent search reasonably could have been expected to discover.’”
Next, and aside from their arguments regarding the scope of § 315(e)(2) estoppel, Defendants argue that they are now bringing certain prior art under pre-AIA § 102(a), i.e., not as “patents or printed publications,” but as information that was “known or used by others” before the patented invention. As Defendants note, in IPR proceedings, the PTAB will only consider patents or printed publications as grounds for invalidity due to anticipation or obviousness. Because, Defendants argue, they are relying on the “known or used” prong of pre-AIA § 102(a) for all but one of their prior art grounds (i.e., not on prior art patents or printed publications), the prior art could not have been raised during IPR proceedings and IPR estoppel does not apply.
Under pre-AIA, the juxtaposition between § 102(a) and § 102(b) effectively created a one-year grace period for a patent applicant to file a patent application even after the inventor disclosed information about an invention to the public as long as it was not done via a printed publication. For example, the “known or used” prong of § 102(a) can come into play in the instance where a scientist gives a public presentation and shows slides, but does not distribute his/her slides or immediately publish a copy of them. The presentation itself (as, for instance, recollected through the scientist’s testimony) could still be considered prior art even if the presentation slides were not made “publicly available” at the same time as the presentation.
The Defendants also emphasized an analogy to a circumstance where a petitioner submits a product manual as printed publication prior art before the PTAB, but is not estopped from submitting a prior art product itself in district court litigation. However, the Court reasoned that whether brought as a “printed publication” or under the “known or used” prong, the core element that forms the basis of Defendants’ prior art includes the same documents. Although Defendants assert that there will be a “meaningful difference” in the invalidity presentation under the “known or used” prong, Defendants have not presented sufficient evidence to back that assertion.
Thus, after considering the unique facts of this case, including the specific prior art grounds Defendants seek to characterize, the Court was not persuaded by Defendants’ argument that it is shielded from statutory IPR estoppel by its references to the “known or used” prong of § 102(a). Accordingly, the Court found that statutory IPR estoppel applies to most of the obviousness combinations Defendants has raised, and granted Plaintiff’s motion.
This case is a strong reminder to carefully consider whether or not to file an IPR in defense of a patent infringement action, and if so, what the consequences can be if the IPR fails. In addition, it is a strong reminder to carefully consider which arguments and prior to raise in any IPR.