Law360 interviewed Finnegan partner Kara Specht about significant patent decisions in 2022. Speaking about the Caltech v. Broadcom case, where the U.S. Court of Appeals maintained the U.S. District Court for the Central District of California’s decision barring raising invalidity challenges based on known prior art after an inter partes review [IPR] litigation, Specht said, “It's very favorable for patent owners. You can weigh your options before you decide to file your IPR, knowing the standard so you can plan for it. This gives us that certainty."
The decision overrules Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. and explains that estoppel applies to claims and grounds not in the IPR, but which reasonably could have been included in the petition.
