The chart above shows the number of disclaimed/dedicated patents per year going back to 1995. Every year it has been a relatively small number, and for each instance there is usually some strategic reason for the disclaimer. As you can see, FY2022 is figuratively off the charts–almost triple any year since 2005. I have not yet figured out whether the change here reflects some important change in practice or just a statistical anomaly. Can someone help me understand what is going on here?
The PTAB is the busiest patent court in the country. The Board cancels lots of patent claims, but also regularly sides with patentees in the Final Written Decision (at least as to some claims). Post-IPR estoppel attaches to the cleared-claims and prevents the petitioner (or privies) from later challenging the validity of those claims on grounds actually raised in the IPR as well grounds the petitioner “reasonably could have raised during the inter partes review.” 35 U.S.C. 315(e). In its 2022 Caltech decision, the Federal Circuit overturned its prior Shaw precedent and found that the estoppel broadly applies to all claims challenged in an IPR and all grounds “which reasonably could have been asserted” against the petitioned claims. California Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 991 (Fed. Cir. 2022) (“Caltech”).
More recently, the court was faced with unique partial-institution circumstances in Click-to-Call Techs. LP v. Ingenio, Inc., 45 F.4th 1363 (Fed. Cir. 2022), and again the court concluded that broad estoppel is appropriate. The court particularly concluded that estoppel applies even to non-instituted claims. In a new petition for en banc rehearing, the accused infringer asks the following question:
Whether 35 U.S.C. § 315(e)’s IPR estoppel provision applies only to claims addressed in the final written decision, as consistent with the holdings in Shaw, and Intuitive Surgical, and whether that interpretation remains correct after SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).
You’ll recognize Click-to-Call from the 2020 Supreme Court decision finding institution decisions ordinarily not judicially reviewable. Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020) (Thryv is a DBA name of Ingenio).
The unique circumstances mentioned above are that the PTAB only partially-instituted the IPR. In particular, the USPTO granted institution of most of the challenged claims of Click-to-Call’s US5818836 based upon the “Dezonno” reference, but denied institution with-regard-to claim 27 and also refused to conduct an IPR relying upon the Freeman reference (the only ground raised in the IPR for challenging claim 27). All of the instituted claims were eventually found unpatentable and cancelled in the IPR–but that left claim 27 still standing. Partial institution was eventually ruled improper by the Supreme Court in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). Since the IPR appeal was still pending, post-SAS remand would have been available to re-institute and pick-up claim 27, but neither party asked the PTAB to take-up that task. The patent challenger had already won on all-but-one claim before the PTAB, and re-institution might have required a new trial on all of the challenged claims. The patentee likely saw the PTAB as an unfriendly forum and had no interest in filing a motion to the effect of “yes, may I have another lump please.” Note that Ingenio contests this procedual idea — arguing that dismissal order by the Supreme Court ended the case without remand.
Although I identified this as a “unique circumstance,” partial institution was a regular practice for several years prior to SAS and so there are hundreds of patents in a similar position. Point being, this issue is goes beyond the parties here and will have a larger impact, if only transitionary post-SAS.
Once the IPR concluded, district court litigation restarted, focusing on claim 27. The district court sided with defendant Ingenio on summary judgment. In particular, the court found claim 27 was invalid based upon Dezonno, the same prior art reference used by the PTAB to cancel all the other claims. Click-to-call argued estoppel, but that argument was rejected. On appeal, the Federal Circuit reversed, holding that “the district court erred in not applying IPR estoppel under 35 U.S.C. § 315(e)(2) to claim 27 based on Dezonno.”
Ingenio has argued that estoppel applies only to invalidity challenges to claims that were subject to the IPR final written decision. The statute is not crystal clear on this point–even more so now that we recognize that partial institution was improper. This is a case where ask about the correct statutory interpretation in a situation where we now know that the agency acted improperly.
But, lets look at the statute. 315(e) estoppel applies on a claim-by-claim basis as follows:
The petitioner in an inter partes review of a claim in a patent … that results in a final written decision … may not assert [in patent litigation] that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
Id. I have been struggling through this statute. In my reading, the most straightforward construction sides with the Federal Circuit in this situation. It requires that estopped claims be part of the IPR and that the IPR result in a final written decision, but does not require that all of the estopped claims be adjudged in the final written decision.
The en banc petition also suggests that the court may want to reconsider its decision in Caltech. In particular, the three-judge Caltech panel finding broad estoppel overturned the prior Federal Circuit panel decision in Shaw. Ordinary rules of appellate precedent prohibit one panel from overturning the decision of a prior panel. But, the Caltech judges found that the Supreme Court’s intervening decision in SAS so abrogated the reasoning of Shaw as to open the door for panel action. The petition argues that was improper:
The Caltech panel incorrectly relied on SAS to overturn Shaw. SAS did not itself overturn Shaw, and in fact analyzed a different statute entirely (35 U.S.C. § 318(a) vs. § 315(e)(2)). Nonetheless, the Panel held that, because Shaw’s reasoning rested on the assumption that partial institutions were permissible, SAS’s elimination of partial institutions required Shaw to be overruled. But that is incorrect. Shaw was not limited to the particular facts of its case, but instead held that the plain language of § 315(e )(2) prohibits IPR estoppel from attaching to grounds that were not part of the IPR, which began at institution. SAS did not undermine or challenge the validity of Shaw as a textual construction of § 315(e)(2).
Petition. If you recall, the Caltech decision is also still pending on petition for writ of certiorari before the Supreme Court. Thus, this case may provide an opportunity for the Federal Circuit to preemptively speak to the high court.
"Whether an artificial intelligence can be an inventor for purposes of patent law, which implicates the most fundamental aspects of patent law, namely, the nature of inventorship and therefore whether AI discoveries can be patented."
If you are thinking about this from the corporate level, check out my new book chapter: Dennis Crouch, Legal Fictions and the Corporation as an Inventive Artificial Intelligence, Forthcoming in Research Handbooks on Intellectual Property and Artificial Intelligence (R. Abbott, ed). A draft version is available online here: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4081569 .