PTAB Petitions Held Steady in Q1 as Federal Circuit Focused on IPR Estoppel

In the first quarter of 2022, 336 petitions for America Invents Act (AIA) review were filed with the PTAB, including 328 petitions for inter partes review (IPR) and eight petitions for post-grant review (PGR). Filings in Q1 were essentially unchanged from both the prior quarter (339 total petitions) and Q1 2021 (337 total petitions).

Throughout the first quarter, the Federal Circuit also issued several significant decisions that dealt with the PTAB, addressing a variety of topics relevant to AIA reviews. Among the most notable was its February 4 opinion in Caltech v. Apple and Broadcom. That ruling vacated and remanded a $1.1B damages award against the defendants but also significantly expanded IPR estoppel—the statutory requirement that restricts petitioners from raising certain IPR validity arguments in subsequent district court challenges.

In Caltech, the Federal Circuit resolved a district court split over the application of that requirement by overruling its 2016 Shaw Industries Group v. Creel Automated Systems decision, now holding that a petitioner is estopped not just from later asserting arguments actually raised in a successful petition, but also from making any arguments that they “reasonably could have” included. The decision’s original wording was interpreted by some stakeholders as establishing that an IPR against even one claim of a patent could lead to estoppel as to all claims of that patent. However, the court subsequently modified the opinion to clarify that Caltech extends estoppel to grounds that “reasonably could have” been included but not as to all claims.

On February 24, the Federal Circuit additionally held that appellate review is available for USPTO decisions not to initiate reexaminations based on IPR estoppel, which in this context bars reexam requests by petitioners whose IPRs against the same claims have reached final written decisions. In Alarm.com v. Hirshfeld, the court ruled that the Eastern District of Virginia was wrong to reject an APA lawsuit challenging a reexam denial on that basis. The Federal Circuit instead concluded, contrary to the district court, that the relevant statutory scheme does not preclude appeals of IPR estoppel decisions with respect to reexams.

Another decision of particular commercial relevance was the Federal Circuit’s ruling that forum selection clauses can bar parties from filing IPRs. On February 8, the court held in Nippon Shinyaku v. Sarepta Therapeutics that parties are free to contract around IPRs should they choose to do so, confirming a series of prior rulings in its first precedential opinion addressing the issue. The decision places even greater importance on the careful review of forum selection clauses for potential defendants that wish to preserve their options for validity challenges.