Federal Circuit in 'Caltech' Clarifies the Scope of IPR Estoppel
In the end, while the Federal Circuit did overrule 'Shaw', and now provides uniform guidance to district courts that IPR estoppel does, in fact, apply to grounds that reasonably could have been raised in an IPR proceeding, the Federal Circuit also clarified that IPR estoppel still applies only as to patent claims actually challenged in an IPR petition.
March 22, 2022 at 12:00 PM
8 minute read
A recent decision by the U.S. Court of Appeals for the Federal Circuit regarding the scope of estoppel triggered by an inter partes review (IPR) proceeding initially prompted panic among patent litigants, as it suggested a far broader scope of estoppel than had been applied under controlling precedent to that point. But a quick-on-its-feet Federal Circuit issued an errata opinion just over two weeks later, correcting certain of its statements regarding IPR estoppel. While the corrected opinion still overrules one prior decision—as was clearly intended based on the Federal Circuit's reasoning—the correction otherwise moved the decision back in line with precedent.
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