Litigation Trends 2024

74 | Weil, Gotshal & Manges LLP LITIGATION TRENDS 2024 | 75 T O C E M P A N T I I P C A P R O W C C O N T A C T I N T A P P P A T C C L S E C Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016) held that estoppel did not apply to petitioned, but non-instituted grounds, reasoning that an “IPR does not begin until it is instituted” and that a Petitioner could not reasonably have raised a ground during an IPR for which the Board had denied institution. Id. at 1300. Some courts limited estoppel to petitioned, non-instituted grounds and thus simply did not apply estoppel to non-petitioned grounds. This understanding was subsequently rendered untenable by SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018), which required the Board to institute on all challenges for all claims, thus eliminating the possibility of petitioned, non-instituted grounds in any AIA proceeding that would result in a final written decision. Accordingly, the Federal Circuit overruled Shaw in California Institute of Technology v. Broadcom Limited, 25 F.4th 976 (2022), “clarify[ing] that estoppel [from an IPR] applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all grounds not stated in the petition but which reasonably could have been asserted against the claims included in the petition.” Id. at 991. Patent Litigation In 2023, the Federal Circuit in Ironburg Inventions, Ltd. v. Valve Corporation, 64 F.4th 1274 (Fed. Cir. 2023), addressed one remaining question, “the standards by which a determination is to be made as to what invalidity grounds not presented in a petition [for IPR] are estopped pursuant to § 315(e)(2),” and by implication for PGR, pursuant to § 325(e)(2). Id. at 1297-1298. In Ironburg, Valve, a defendant in the district court case and the petitioner in the IPR, raised new grounds of invalidity in district court that it had not included in its IPR petition at the PTAB. Id. at 1296. Valve contended that the new, non-petitioned grounds were not estopped because its own reasonably diligent search had failed to identify prior art references that were the basis of the non-petitioned grounds. Id. at 1298. The Federal Circuit acknowledged that it had “not fully addressed the standards by which a determination is to be made as to what invalidity grounds not presented in a petition are estopped” and went on to hold that “§ 315(e)(2) estops a petitioner as to invalidity grounds a skilled searcher ... reasonably could have been expected to discover, as these are grounds that the petitioner ‘reasonably could have raised’ in its petition.” Id. The Federal Circuit further held that “the burden is on [the patent owner] to prove, by a preponderance of the evidence, that a skilled searcher conducting a diligent search reasonably would have been expected to discover” the prior art references that the patent owner seeks to estop the defendant, that is, the petitioner, from asserting as a basis for invalidity. Id. at 1299. The Supreme Court’s decision in the case of Chevron v. NRDC has governed judicial review of federal agency decisions for nearly 40 years. In practice, this has given federal agencies, including the ITC and USPTO in certain circumstances, wide discretion to interpret and implement rules and regulatory schemes. Now, two cases again present the Court with the question of what weight to give and level of deference is owed to agency decision making. P A T

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