On February 4, 2022, the Court of Appeals for the Federal Circuit (CAFC) vacated a $1.1 billion damages award to the California Institute of Technology in a dispute against Apple and Broadcom. One part of the decision built upon the America Invents Act (AIA) estoppel provision, stating that following a final inter partes review (IPR) ruling, parties are barred from bringing forward any argument in an infringement litigation that could have been raised during an earlier IPR process. Because some courts had allowed invalidity arguments in later cases, the CAFC decision will have significant implications for patent disputes moving forward. Law360 contacted Finnegan partner Barbara McCurdy for her thoughts on the decision.
Barbara stated:
“Petitioners had it very good previously, and the pendulum has really swung back probably more to the middle, and towards patent owners to say no, the estoppel tool is very broad...It will apply to grounds you raised that were decided by the final written decision, and also grounds that you could have raised, but didn’t put in your petition.”
The CAFC ‘s ruling, which overruled a previous decision without the court going en banc, may spur further appeals of the case. Barbara said, “I would guess that it may be subject to challenge, but I think the clarity that the decision gives to district courts and litigants is probably welcome.”
Read "Fed. Circ. Clamps Down on Post-IPR Invalidity Arguments"
