The Federal Circuit prevented a spate of litigation when it revised a precedential opinion to show it didn’t aim to make a drastic change in law governing when patent challengers can make certain arguments in district courts, attorneys said.
In tossing the California Institute of Technology’s billion-dollar patent award against Apple Inc. and Broadcom Inc., the U.S. Court of Appeals for the Federal Circuit at first said that after a final inter partes review decision by the Patent Trial and Appeal Board, challengers can’t raise any arguments in district court that they decided not to raise at the board.
The implication was that that bar, know as inter partes review estoppel, applied to all the claims in a challenged patent. That would have required challengers to attack entire patents in order to contest any part of them. …
The issue would have bubbled up because many companies saw the original language and were concerned about it, Eugene Goryunov, a Haynes Boone partner, said. “It’s really helpful that the court observed that, caught that issue, and corrected it before this situation went above and beyond what it should have,” he said. …
Goryunov said the revised opinion would reduce the number of requests for district courts to decide the scope of estoppel.
“The only thing the court is going to have to decide now is whether or not something could have been reasonably raised,” Goryunov said. “That itself is not a clear-cut question, but at least it narrows down the scope of the dispute.”
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