Apple Inc., et al. v. California Institute of Technology

In 2011, Congress created inter partes review (“IPR”), an administrative process that allows the United States Patent and Trademark Office to evaluate the validity of issued patents. The process is divided into two phases: First, the Patent Office determines whether to institute an inter partes review based upon the grounds presented in a petition; and second, if the petition is granted, the Patent Trial and Appeal Board conducts the inter partes review and issues a final written decision determining whether the challenged patent claims are valid or invalid. This case concerns the interpretation of the IPR estoppel statute, which bars an IPR petitioner from asserting in a district court action that a patent claim is invalid on any ground the petitioner “reasonably could have raised during th[e] inter partes review.” 35 U.S.C. § 315(e)(2) (emphasis added). For several years, the Federal Circuit interpreted that provision according to its plain text as applying estoppel only to grounds that the petitioner reasonably could have raised in the instituted inter partes review. In this case, however, the Federal Circuit overruled its prior precedent and held that the statute broadly applies estoppel to all grounds that the petitioner reasonably could have raised in the initial petition requesting that the Patent Office conduct an inter partes review. The question presented is: Whether the Federal Circuit erroneously extended IPR estoppel under 35 U.S.C. § 315(e)(2) to all grounds that reasonably could have been raised in the petition filed before an inter partes review is instituted, even though the text of the statute applies estoppel only to grounds that “reasonably could have [been] raised during that inter partes review.” (i)